exv10w1






Exhibit 10.1




CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION UNDER A
CONFIDENTIAL TREATMENT REQUEST, PURSUANT TO RULE 406 OF THE
SECURITIES ACT OF 1933, AS AMENDED, AND RULE 24b-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED. THE REDACTED TERMS HAVE BEEN MARKED
IN THIS EXHIBIT AT THE APPROPRIATE PLACE WITH THREE ASTERISKS [***].





DEVELOPMENT AND SUPPLY AGREEMENT




BY AND BETWEEN




LUMINEX CORPORATION




AND




RBM ACQUISITION, INC.




 









 





Table of Contents




	 	 	 	 	 
	 
	ARTICLE 1 DEFINITIONS
	 	 	1	 
	 
	ARTICLE 2 DEVELOPMENT AND COMMERCIALIZATION
	 	 	5	 
	 
	ARTICLE 3 DISTRIBUTION
	 	 	9	 
	 
	ARTICLE 4 SUPPLY, PRICING AND ROYALTIES
	 	 	11	 
	 
	ARTICLE 5 EXCLUSIVITY OF EFFORTS AND COMPLIANCE WITH LAWS
	 	 	17	 
	 
	ARTICLE 6 MAINTENANCE, SUPPORT AND TRAINING
	 	 	17	 
	 
	ARTICLE 7 WARRANTIES
	 	 	18	 
	 
	ARTICLE 8 TERM AND TERMINATION
	 	 	19	 
	 
	ARTICLE 9 LUMINEX TRADEMARKS
	 	 	22	 
	 
	ARTICLE 10 CONFIDENTIALITY
	 	 	22	 
	 
	ARTICLE 11 INDEMNIFICATION
	 	 	23	 
	 
	ARTICLE 12 MISCELLANEOUS
	 	 	25	 






	 	 	 	 	 
	EXHIBIT A END USER LICENSES
	 	 	A-1	 
	 
	EXHIBIT B LUMINEX 100 SYSTEM PRICE
	 	 	B-1	 
	 
	EXHIBIT C TRADEMARKS
	 	 	C-1	 
	 
	EXHIBIT D BEAD PRICES
	 	 	D-1	 
	 
	EXHIBIT E ESCROW AGREEMENT
	 	 	E-1	 
	 
	EXHIBIT F RBM GENERATED INTELLECTUAL PROPERTY
	 	 	F-1	 
	 
	EXHIBIT G AVAILABLE FIELDS
	 	 	G-1	 
	 
	EXHIBIT H ELECTED FIELDS
	 	 	H-1	 






 









 





DEVELOPMENT AND SUPPLY AGREEMENT




     This Development and Supply Agreement (the “Agreement”), effective as of September 5, 2002
(the “Effective Date”), is entered into by and between LUMINEX CORPORATION, a Delaware corporation
with principal offices at 12212 Technology Boulevard, Austin, Texas 78727 (“LUMINEX”), and RBM
Acquisition, Inc., a Delaware corporation headquartered in Austin, Texas (“RBM”).



BACKGROUND




     WHEREAS, the parties have entered into that certain Asset Purchase Agreement (the “Purchase
Agreement”; terms not otherwise defined herein shall have the meaning ascribed to them in the
Purchase Agreement) pursuant to which RBM is purchasing certain assets and assuming certain
liabilities associated with the RBM Business (as defined below) and, in connection therewith, has
issued to LUMINEX, among other consideration, nine hundred and ninety thousand (990,000) shares of
Series A Preferred Stock of RBM, $.001 par value per share (the “Series A Preferred Stock”).



     WHEREAS, LUMINEX has developed Beads (defined below) for detection and quantification of
analytes, either singly or in multiplexed (multiple analytes simultaneously) form and has developed
the Luminex 100 System (defined below) for use with such Beads and certain intellectual property
related to the RBM Business and the Field (as defined herein).



     WHEREAS, RBM is in the business of developing and commercializing testing services and reagent
kit products for the pharmaceutical, diagnostics, toxicology, epidemiology and biotechnology
markets, generating and selling access to a database of information from blood samples and other
fluids or tissues and determining the relevance of such information and establishing an
intellectual property position around the relationship of the information to health and disease
including diagnostics, prognostics and therapeutics (“RBM Business”).



     WHEREAS, the parties desire that RBM develop and distribute Developed Products incorporating
Tests (both defined below) for use within the Field, and that RBM distribute Luminex 100 Systems
for use with such Developed Products.



     NOW THEREFORE, for and in consideration of the covenants, conditions, and undertakings
hereinafter set forth, it is agreed by and between the parties as follows:



ARTICLE 1

DEFINITIONS




     1.1. “Affiliate” means any entity that directly or indirectly owns, is owned by or is
under common ownership with a party hereto, where “owns” or “ownership” means direct or indirect
possession and/or control of at least fifty percent (50%) of the outstanding voting securities of a
corporation or a comparable equity interest in any other type of entity.



     1.2. “Actual Knowledge” means the personal knowledge of at least a director level
staff of the Parties concerned.



 









 





     1.3. “Available Field(s)” means those Fields identified in Exhibit G hereto.



     1.4. “Beads” means LUMINEX’s standard fluorescently-dyed microsphere beads, including
without limitation, Substitute RBM Beads (as defined in that certain Letter Agreement between the
parties hereto dated September 5, 2002), supplied by LUMINEX for use with Luminex 100 Systems and
made available by LUMINEX generally to customers for use in Tests.



     1.5. “Bead Specifications” means the specifications for Beads as designated by LUMINEX
from time-to-time.



     1.6. “Developed Kits” means any Bead-based Kit developed by or for RBM for use in the
Field.



     1.7. “Developed Products” shall mean Testing Services and Developed Kits,
collectively.



     1.8. “Elected Field(s)” means those Fields identified in Exhibit H hereto.



     1.9. “End User” shall mean (i) a consumer of Developed Products that obtains Developed
Products for the purpose of generating Test results on behalf of itself or third parties and not
for the purpose of re-selling the Kit(s), and (ii) a purchaser or consumer of Luminex 100 Systems
that obtains Luminex 100 Systems for use with Beads for internal use or for use with Kits
manufactured by LUMINEX, RBM, any Subdistributor or other third party duly authorized to develop
and manufacture Kits.



     1.10. “Field” means the Available Fields and Elected Fields set forth in Exhibit
G and Exhibit H.



     1.11. “Field Date” means the later of the date on which (i) RBM elects a Field or (ii)
LUMINEX receives the Field Fee (as defined below) for an Elected Field.



     1.12. “Human MAP Analyte Panel” means that portion of the RBM Generated Intellectual
Property listed on Exhibit F under the heading “Human MAP Analyte Panel”.



     1.13. “Included Software” means all software that manipulates, organizes, compiles,
captures, or similarly processes data, from the point of data entry into the Luminex 100 System to
the point of fluorescent data output from the Luminex 100 System, including without limitation
digital signal processing software, data acquisition software, instrument calibration operations
software, instrument control firmware, graphical user interface software components, and print
formatting software features. Also included in this definition of “Included Software” is all
software code exposed to RBM through any interface.



     1.14. “Intellectual Property Rights” means any or all of the following and all
statutory and/or common law rights throughout the world in, arising out of, or associated
therewith: (i) Patents; (ii) all trade secrets and know-how; (iii) all works of authorship,
copyrights, mask



2









 







works, copyright and mask work registrations and applications; (iv) all industrial designs and
any registrations and applications therefor; (v) all trade names, logos, trademarks and service
marks; trademark and service mark registrations and applications; (vi) all rights in software;
(vii) any other similar rights in or arising out of Technology worldwide, in each case, whether
arising under the laws of the United States or any other state, country or jurisdiction; and (viii)
any goodwill associated with any of the foregoing.



     1.15. “Kit” means the combination of (i) Beads conjugated to biological reactants,
(ii) standards, and (iii) other ancillary materials (e.g., buffers) intended for performance of
Tests.



     1.16. “Laboratory Notebooks” means the laboratory notebooks as defined in Exhibit
F attached hereto.



     1.17. “Luminex Business” means the business as described in LUMINEX’s Annual Report on
Form 10-K for the year ended December 31, 2001 and any subsequent period report filed with the
Securities and Exchange Commission as of the date hereof, and, without limitation, the following:
research, development, manufacture, use and sale of laser based fluorescent analyte test systems
and the fluorescent dyed microsphere beads for use with such test systems; research, development,
manufacture and use of methods of conjugating beads to biological reactants; development of
software related to the operation, calibration, data acquisition, control, interface, and other
uses of such systems; obtaining intellectual property for all of the above.



     1.18. “Luminex 100 System” means a laser-based fluorescent analytical test system
consisting of LUMINEX’s instrumentation marketed under the name Luminex 100 and the Software, with
or without off-the-shelf computer components (selection of off-the-shelf computer components to be
by LUMINEX), and any functional replacements and line extensions of the Luminex 100 System,
including autosampler-based versions, in each case to the extent made available by LUMINEX
generally to its customers.



     1.19. “Luminex 100 System Specifications” means the specifications for the Luminex 100
System as designated by LUMINEX from time to time in writing.



     1.20. “LUMINEX Intellectual Property Rights” means (i) patent claims to the extent
such claims cover only an apparatus or composition of matter, and not a method or process; and (ii)
copyrights. LUMINEX Intellectual Property Rights shall not mean nor include RBM Generated
Intellectual Property.



     1.21. “Mouse 75 Analyte Panel” shall mean that portion of the RBM Generated
Intellectual Property listed on Exhibit F under the heading Mouse 75 Analyte Panel.



     1.22. “Multiplexed Bead Assays” means a number of assays derived from the use of
fluorescently-dyed microsphere beads in a flow based system with said assays determined
substantially simultaneously on a single sample.



     1.23. “Net Sales” means the total amounts invoiced by RBM and/or Subdistributors by or
on behalf of RBM to third parties and End Users for the sale or any other provision of



3









 







Developed Products, less, in the case of Developed Kits, all (i) volume discounts, rebates,
and returns; (ii) customs duties, taxes (e.g., sales, excise, withholding, and value-added taxes)
other than taxes based upon RBM’s income, (iii) freight, insurance and other actual direct shipment
expenses; and (iv) reasonable royalties to be paid to third parties by RBM, if any, for Developed
Kits components, excluding royalties payable to LUMINEX under Section 4.7.



     1.24. “Panel” means a specified series or group of Tests.



     1.25. “Patents” means any and all rights in, to, or arising out of any of the
following: (i) a United States, international or foreign patent, utility model, design
registration, certificate of invention, patent of addition or substitution, or other governmental
grant for the protection of inventions or industrial designs anywhere in the world, including any
reissue, renewal, re-examination or extension thereof; and (ii) any application for any of the
foregoing, including any international, provisional, divisional, continuation,
continuation-in-part, or continued prosecution application.



     1.26. “RBM Improvement Patents” means Patents claiming inventions comprising
modifications, extensions or enhancements conceived or reduced to practice by RBM to the Beads or
Luminex 100 Systems or portions thereof (including without limitation Included Software) or to the
manufacture or use of the Beads, Luminex 100 Systems or portions thereof (including without
limitation Included Software) conceived as a direct result of use of the Beads, Luminex 100 Systems
or portions thereof. “RBM Improvement Patents” specifically excludes Patent claims conceived or
reduced to practice by RBM after the Closing Date and consisting of the following: (a) methods of
sample preparation, (b) methods of conjugating Beads to analytes, (c) the composition of matter of
the specific chemistries of the assays developed by RBM, and (d) methods of performing the assays
(i.e., the protocol for the assay) (such excluded Patent claims constituting “RBM
Patents”). Subject to the license set forth in Section 3.5 of this Agreement, as between RBM
and LUMINEX, RBM shall own all right, title and interest in and to such RBM Patents.



     1.27. “RBM Generated Intellectual Property” means the Technology and Intellectual
Property Rights related to the RBM Business and that were developed, created, conceived of, reduced
to practice or otherwise generated by Transferred Employees alone or with other LUMINEX employees,
while such Transferred Employees were employed by LUMINEX. Such RBM Generated Intellectual
Property is set forth in, but is not limited to, Exhibit F. Subject to the licenses set
forth in this Agreement, as between RBM and LUMINEX, LUMINEX shall own all right, title and
interest in and to such RBM Generated Intellectual Property.



     1.28. “RBM Residuals” means any information, ideas, concepts, know-how, show-how, or
techniques, which are related to, embodied in or derived from the Assets (as such term is defined
in the Purchase Agreement) or the RBM Generated Intellectual Property, and which are retained in
the memories of the Transferred Employees. Subject to the licenses set forth in this Agreement, as
between RBM and LUMINEX, LUMINEX shall own all right, title and interest in and to such RBM
Residuals.



4









 





     1.29. “Research Use” means the performance of basic research including medical
research, but in all events excluding Developed Products for clinical diagnostic purposes.



     1.30. “Software” means the Included Software in machine executable object code format
and Updates thereto, in each case that are made available by LUMINEX generally to its customers as
part of the Luminex 100 System.



     1.31. “Specifications” means the Bead Specifications and the Luminex 100 System
Specifications.



     1.32. “Technology” shall mean all technology, including all know-how, show-how,
techniques, design rules, inventions (whether or not patented or patentable), algorithms, routines,
software, files, databases, data compilations and collections and technical data, works of
authorship, processes, devices, prototypes, schematics, test methodologies, hardware development
tools, any media on which any of the foregoing is recorded and any other tangible embodiments of
any of the foregoing.



     1.33. “Territory” means North America and Europe, subject to modification as provided
in Section 8.5. RBM may elect the right to additional available Territories subject to the
provisions set forth in Section 2.6. For clarity, references to the Territory are restricted to End
Users and potential End Users residing or located within the Territory. End Users may not transfer
Developed Products or Luminex 100 Systems outside of the Territory. While sales through the
Internet are permissible, such sales may only be made to End Users residing or located in the
Territory.



     1.34. “Test” means a single use of Beads as conjugated to biological reagents in the
detection or quantification of an analyte and the results from the same.



     1.35. “Testing Services” means the performance of generating Test or Panel results on
behalf of a third party that is developed by or for RBM for use within the Elected Field(s).



     1.36. “Transferred Employees” has the meaning set forth in the Purchase Agreement.



     1.37. “Updates” means error corrections and bug fixes to the Software that LUMINEX
makes available generally to its customers.



ARTICLE 2

DEVELOPMENT AND COMMERCIALIZATION




     2.1. Development. RBM shall be responsible, at its expense, for all Developed Products
design and development hereunder. LUMINEX shall have no obligation to develop any Developed
Products, or to supply any Developed Products to RBM. Subject to the terms and conditions of this
Agreement and the restrictions on indemnification set forth in Article 11 hereof, LUMINEX grants to
RBM a personal, nontransferable (except pursuant to Section 12.4), royalty-bearing immunity from
suit solely with respect to LUMINEX Intellectual Property Rights used in the design, development
and manufacturing of Developed Products herein



5









 







contemplated, provided that Developed Products are designed, developed and sold solely for use
in the Elected Field(s) and subject to the End User restrictions set forth in Section 3.4 below.
This immunity shall not apply to any misappropriation of trade secrets caused by a breach of the
confidentiality provisions hereof. RBM’s development rights are non-exclusive.



     2.2. RBM Generated Intellectual Property License. Subject to the provisions of this
Agreement and any applicable provision in the Certificate of Designations to the Series A
Redeemable Preferred Stock, LUMINEX hereby grants to RBM a non-exclusive, irrevocable, transferable
(subject to 2.3 below), worldwide license under all of LUMINEX’s rights in and to the RBM Generated
Intellectual Property and RBM Residuals to manufacture, have manufactured, use, sell, offer for
sale and import products and services, including, without limitation, the Developed Products. Other
than royalties with respect to Developed Products as set forth herein, it is acknowledged and
agreed that any product or service developed, manufactured, sold, or offered for sale by RBM that
is within the scope of the RBM Business shall be royalty free with respect to RBM Generated
Intellectual Property. It is further acknowledged and agreed that any product or service
developed, manufactured, sold, or offered for sale by RBM that is not within the scope of the RBM
Business but uses or is based upon, in whole or in part, the RBM Generated Intellectual Property
shall be royalty bearing with respect to the RBM Generated Intellectual Property, and the parties
hereto shall, as soon as commercially practicable, negotiate in good faith an appropriate royalty
and other terms and conditions for such product or service that is within or covered by the RBM
Generated Intellectual Property. In the event LUMINEX and RBM cannot agree upon the appropriate
royalty and other terms and conditions for such product or service, either or both of them may
refer the matter to binding arbitration in accordance with the then applicable rules of the
American Arbitration Association (“AAA”) and its Expedited Procedure provisions, at their joint
expense, and until the matter is finally determined, RBM shall continue to pay royalties under the
provisions of Section 4.7.



     2.3. Restrictions on RBM. During the period from the Effective Date hereof through
December 31, 2003 (the “Restricted Period”), RBM shall not disclose (except as required in the
conduct of its business in the ordinary course and subject to executed confidentiality agreements),
license, transfer or otherwise provide Confidential Information (as defined in Article 10 below)
contained in the Laboratory Notebooks for more than twenty five (25) of the Mouse 75 Analyte Panel
and fifty (50) of the Human MAP Analyte Panel in aggregate, respectively, to any third party or
such third party’s Affiliates. Any disclosure to a third party of Confidential Information
contained in the Laboratory Notebooks or otherwise pursuant to this Section 2.3 shall be subject to
a written, executed confidentiality agreement. RBM shall have the right to request in writing
LUMINEX’s written consent to sublicense or transfer more than twenty five (25) on the Mouse 75
Analyte Panel and fifty (50) on the Human MAP Analyte Panel in aggregate to any third party or such
third party’s Affiliates. Additionally, RBM shall also be permitted to disclose more than twenty
five (25) of the Mouse 75 Analyte Panel and fifty (50) of the Human MAP Analyte Panel, on “need to
know” basis (i) to RBM’s accountants, legal representatives or financial advisors, (ii) to the
extent required by applicable law, pursuant to any subpoena, court order or regulatory authority,
and (iii) to a third party for the purpose of evaluating and negotiating a corporate merger,
acquisition, sale of all or substantially all of the assets of the RBM Business, or a similar
business transaction, it being understood and agreed



6









 







that such information may only be disclosed after such third parties execute confidentiality
agreements.



     2.4. Restrictions on Luminex. During the Restricted Period, LUMINEX shall not
disclose, license, transfer or otherwise provide Confidential Information contained in the
Laboratory Notebooks for more than twenty five (25) of the Mouse 75 Analyte Panel and fifty (50) of
the Human MAP Analyte Panel in aggregate, respectively, to any third party or such third party’s
Affiliates. Notwithstanding the foregoing, LUMINEX shall be permitted during the Restricted Period
to disclose, license, transfer or otherwise provide the RBM Generated Intellectual Property,
Technology or Intellectual Property Rights underlying or related in any way to the creation or
development thereof for any reason other than as specifically set forth in the preceding sentence.
Additionally, LUMINEX shall also be permitted to disclose more than twenty five (25) of the Mouse
75 Analyte Panel and fifty (50) of the Human MAP Analyte Panel, on a “need to know” basis (i) to
LUMINEX’s accountants, legal representatives, or financial advisors, (ii) to the extent required by
applicable law, pursuant to any subpoena, court order or regulatory authority, and (iii) to a third
party for the purpose of evaluating and negotiating a corporate merger, acquisition, sale of all of
substantially all of the assets of the Luminex Business, or a similar business transaction, it
being understood and agreed that such information may only be disclosed after such third parties
execute confidentiality agreements relating to the RBM Generated Intellectual Property.



     2.5. Commercialization within the Elected Field. As to Developed Products, RBM shall
(i) obtain all regulatory approvals required, if any, for the use, sales, marketing and
distribution of the Developed Products for use within the Elected Field(s) set forth on Exhibit
H, and (ii) have sold any number of such Developed Products for use within the Elected Field(s)
set forth on Exhibit H for which a royalty is owed pursuant to Section 4.7 in the
Territory, in each of (i) and (ii) within eighteen (18) months after the Closing Date. Failure to
meet both of the preceding conditions may result in termination of certain rights of RBM hereunder
under Section 8.4.



     2.6. Commercialization within the Territory. As to Developed Products, RBM shall (i)
obtain all regulatory approvals required, if any, for the use, sales, marketing and distribution of
the Developed Products for use within the Elected Field(s) in the Territory, and (ii) have sold any
number of such Developed Products for which a royalty is owed pursuant to Section 4.7 in each
country in the Territory, in each of (i) and (ii) within thirty-six (36) months after the Closing
Date. Failure to meet both of the preceding conditions may result in termination of certain rights
of RBM hereunder under Section 8.5.



     2.7. Luminex Cooperation; Contract Manufacturing.



          (a) LUMINEX will reasonably cooperate with RBM, at RBM’s expense, to the extent LUMINEX’s
participation is necessary for RBM to obtain regulatory approval for the Developed Products for
use, sales, marketing and distribution within the Field in the Territory. LUMINEX will make
available to RBM, without charge, such tangible written information in LUMINEX’s possession and
control as is necessary to obtain regulatory approval for the Developed Products, it being
understood that LUMINEX shall not be required to perform any



7









 






tests or studies required for regulatory approval. Notwithstanding the foregoing, LUMINEX
shall have no duty of cooperation with respect to its confidential information unless the
regulatory authority in question protects such confidential information from disclosure to a degree
substantially similar to that protection provided by the United States Food & Drug Administration.




          (b) LUMINEX may, at its option and in its sole discretion, at RBM’s request and on the terms
acceptable to both parties, conduct initial feasibility studies and/or contract manufacturing for
RBM.




     2.8. Progress Reports. RBM shall keep LUMINEX reasonably informed as to the progress
of the activities undertaken pursuant to this Article 2.



     2.9. Ownership of Intellectual Property. For a period of two (2) years following the
Closing Date, any invention relating to the Luminex Business (but specifically excluding any
inventions relating to the RBM Business), whether or not resulting in a Patent application being
filed that names RBM or any RBM employees, will be presumed to be owned by LUMINEX; provided that:



          (a) in the event RBM can conclusively prove by written documentation and in a manner
satisfactory to an independent third-party patent attorney, to be approved by the reasonable mutual
agreement of both parties (acting in good faith), that such an invention was not conceived or
reduced to practice while the inventor thereof was employed by LUMINEX, such invention, any Patent
application filed thereon and any resulting Patent(s) and other Intellectual Property Rights
associated therewith shall be owned by RBM; or




          (b) if RBM cannot provide such conclusive proof, as found by the third party patent
attorney, the invention, any rights to file a Patent application and any resulting Patent(s) and
other Intellectual Property Rights associated therewith shall be owned by LUMINEX, provided that
LUMINEX shall grant to RBM a right of first negotiation for a license for use of such inventions
and resulting Patents within the Elected Field(s).




     2.10. Insurance. During the term of this Agreement, RBM shall, at its sole cost and
expense, obtain and keep in force a policy of comprehensive general liability insurance with bodily
injury, death and property damage limits of not less than $1,000,000 per occurrence and $4,000,000
in umbrella coverage, including product liability coverage. RBM shall cause LUMINEX to be named as
an additional insured on such insurance policy. Within thirty (30) days following the Effective
Date, RBM shall furnish LUMINEX with a certificate of insurance evidencing the insurance required
hereunder. RBM will provide to LUMINEX (i) at least thirty (30) days prior written notice of any
cancellation, termination or material change of such insurance coverage and (ii) prompt written
notice of the occurrence of any event that is reasonably likely to result in a claim being made
under such insurance policy.



     2.11. Mutual Cooperation. Each of the parties hereto will cooperate in timely manner
with the other, and execute and deliver to the other party hereto, all such documents and
instruments, and take such other reasonable actions (including reasonable assistance in determining
and interpreting RBM Generated Intellectual Property), as may be reasonably



8









 







requested by the other party from time to time to carry out, evidence and confirm the intended
purposes of this Agreement and the Purchase Agreement. In furtherance hereof, RBM agrees through
December 31, 2003, to make available to LUMINEX RBM employees, during normal business hours and
upon reasonable request, to assist with the interpretation and utilization of the RBM Generated
Intellectual Property (including, without limitation, the Laboratory Notebooks). Furthermore, the
parties hereto acknowledge and confirm that this is a complex and unique relationship, and the
parties agree to act in good faith to carry out the intent of this Agreement.



ARTICLE 3

DISTRIBUTION




     3.1. Appointment; Covenant Not to Sue. Subject to the terms and conditions of this
Agreement, LUMINEX appoints RBM as a distributor to End Users and prospective End Users in the
Territory of Developed Products and Luminex 100 Systems designed and sold solely for use in an
Elected Field. Subject to the terms and conditions of this Agreement, LUMINEX grants to RBM a
personal, nontransferable (except pursuant to Section 12.4), royalty-bearing immunity from suit
under LUMINEX’s Intellectual Property Rights, with respect to the sale of Developed Products and
re-sale of Luminex 100 Systems. RBM agrees not to provide or offer the Luminex 100 Systems or
Developed Products to any third party if RBM has Actual Knowledge that such third party has
previously used or intends to use (i) the Luminex 100 System with microspheres other than the Beads
authorized by LUMINEX, (ii) the Luminex 100 System or Beads outside the Elected Field(s), (iii) the
Beads in any manner other than in connection with a LUMINEX instrument, or (iv) in violation of the
End User restrictions contemplated in Section 3.4 below. LUMINEX agrees to grant to End Users of
Developed Products a license to use Beads in conjunction with their operation of Luminex 100
Systems pursuant to the then-current End User Licenses and Terms and Conditions contemplated in
Section 3.4 below. It is understood and agreed that except as expressly provided in Section 2.1,
this Section 3.1, and in Article 9 of this Agreement, no rights or licenses under LUMINEX’s
Intellectual Property Rights are granted hereunder nor shall any such rights or licenses be implied
from the terms hereof. The parties further acknowledge and agree that the covenant not to sue set
forth in Section 2.1 and this Section 3.1 above shall not imply that purchasers of the Luminex 100
System obtain any rights under LUMINEX’s Patents and Software. Rather, LUMINEX will grant End
Users the right under LUMINEX’s Patents and Software to use the Luminex 100 System with Developed
Products subject to the then-current End User Licenses and Terms and Conditions described in
Section 3.4 below only when such Developed Products are purchased by the End User.



     3.2. Reservation of Rights. Except as expressly permitted under this Agreement, the
use by RBM of any of LUMINEX’s Intellectual Property Rights and RBM Generated Intellectual Property
(collectively, the “Reserved IPR”) is authorized only for the purposes herein set forth and upon
termination of this Agreement for any reason whatsoever, such authorization will cease. Nothing in
this Agreement shall be deemed to restrict LUMINEX’s right to exploit Beads, Bead-based Kits or
Panels, or Luminex 100 Systems. Neither RBM nor its customers shall receive any license or rights
under the Reserved IPR by virtue of their purchase of Luminex 100 Systems or Developed Products
other than as expressly set forth herein. RBM shall not remove, alter, cover or obfuscate any
Patent markings, copyright notices or other proprietary rights notices placed on or embedded in the
Beads, Software or Luminex 100



9









 







Systems, or the packaging and documentation related thereto. RBM shall mark all Developed
Products sold or otherwise distributed under this Agreement in accordance with the applicable
statutes and regulations relating to Patent marking of the United States and all other countries in
which the Developed Products are made or sold.



     3.3. No Right to Manufacture or Modify. As between the parties, RBM acknowledges and
agrees that the Software provided by LUMINEX hereunder is licensed, not sold. Beads and
non-Software portions of the Luminex 100 System are sold, subject in every case to the condition
that such transfer does not convey any license, expressly or by implication, to manufacture,
reconstruct, modify, duplicate or otherwise copy or reproduce any of the Beads, Software or the
Luminex 100 Systems. RBM shall not, and shall not permit any third party to, alter, modify, adapt,
translate, prepare derivative works from, decompile, reverse engineer, disassemble, or attempt to
derive computer source code from any Luminex 100 System, Beads, Developed Products made by a party
other than RBM or its Affiliates, or Software. Requests for information necessary to achieve
interoperability with the Luminex 100 System shall be communicated promptly in writing to LUMINEX.
LUMINEX, at its sole option, may elect to provide such information to RBM. To the extent that
LUMINEX provides RBM with access to any source code to the Software (in order to permit RBM to
achieve interoperability with the Luminex 100 System or to permit RBM to develop software modules
that are intended to interface with the Software or otherwise), such source code shall be deemed
“Confidential Information” hereunder and RBM shall return the same to LUMINEX promptly upon
request. RBM will notify LUMINEX immediately upon RBM’s Actual Knowledge that RBM or any third
party has engaged in any of the foregoing prohibited activities and, to the extent permitted by
law, shall cease selling Developed Products to any such person or entity. RBM further agrees that
the Beads and Luminex 100 System comprise a single system, and the Luminex 100 System will not be
used by RBM with microspheres other than the Beads authorized by LUMINEX.



     3.4. End User Restrictions. RBM shall include a copy of the then-current applicable
End User Developed Product and Software license agreements, labels and terms and conditions, a copy
of which, current as of the Closing Date, is attached hereto as Exhibit A (collectively,
the “End User Licenses and Terms and Conditions”) with each Developed Product sold to a customer or
End User by or for RBM. RBM shall further include the End User Licenses and Terms and Conditions
on every Developed Product purchase in the manner prescribed by LUMINEX. LUMINEX shall have the
right to change such End User Licenses and Terms and Conditions on thirty (30) days advance written
notice to RBM. RBM shall use commercially reasonable efforts to make customers and End Users aware
of the End User Licenses and Terms and Conditions prior to the consummation of any sale.



     3.5. License Grant To LUMINEX. RBM hereby grants to LUMINEX a nonexclusive, perpetual,
irrevocable, worldwide license, with the right to grant and authorize sublicenses, under RBM
Improvement Patents, to (i) make, have made, use, import, offer for sale and sell any and all
products and components; (ii) exploit any and all method or process; and (iii) otherwise exploit
the RBM Improvement Patents for all purposes. Such license shall be deemed royalty-free and fully
paid-up. Without limiting the foregoing provisions of this Section 3.5, LUMINEX agrees to work
cooperatively with RBM to restrict the use of any RBM trade secrets which constitute Confidential
Information relating to hardware or software improvements, if any, made
by RBM with respect to the Luminex 100 System.



10









 





     3.6. Subdistributors. Subject to all the terms and conditions herein, RBM may appoint
third parties (including Affiliates of RBM) within RBM’s normal chain of distribution to sell
Developed Products in accordance with the provisions of this Article 3 (such subdistributors
referred to collectively herein as “Subdistributors”); provided, that RBM shall (i) take such
action as shall be reasonably necessary to advise each such Subdistributor of RBM’s confidentiality
and intellectual property obligations under this Agreement, (ii) use reasonable commercial efforts
to include in any agreement or contract with such Subdistributors terms substantially similar to
those hereof and a provision expressly making LUMINEX a third-party beneficiary of such agreement
or contract, (iii) be liable for any breach by such Subdistributors of this Agreement (as if such
Subdistributors were parties to this Agreement), for any violation of applicable laws or
regulations by such Subdistributors and for any improper use, infringement or misappropriation of
Reserved IPR by such Subdistributors, and (iv) indemnify and hold LUMINEX harmless from and against
any claims, causes of action, costs, losses or liabilities incurred by LUMINEX as a result of any
such breach, violation, improper use, infringement or misappropriation. For the avoidance of
doubt, in no event shall RBM provide Beads to third parties except as incorporated into Developed
Products or as replacement components of Developed Products. Except as expressly provided in this
Section 3.6 and Section 12.4, RBM shall have no right to assign or sublicense its rights or appoint
subdistributors hereunder.



ARTICLE 4

SUPPLY, PRICING AND ROYALTIES




     4.1. Supply and Use of Beads and Luminex 100 Systems. Subject to the terms and
conditions of this Agreement, RBM agrees to purchase from LUMINEX, and LUMINEX agrees to use
reasonable, diligent efforts to supply to RBM, RBM’s requirements of Beads and Luminex 100 Systems.
To ensure the quality, consistency and authenticity of Beads, RBM shall exclusively obtain
fluorescently-dyed microsphere beads solely from LUMINEX and only use the beads with Luminex 100
Systems, unless otherwise agreed in writing by LUMINEX. RBM further agrees that it will not sell,
distribute or otherwise transfer Beads to any third party if RBM knows or has reason to know that
such party intends to use the Beads other than with the Luminex 100 System.



     4.2. Orders. RBM’s orders for Luminex 100 Systems and Beads shall be made pursuant to
firm, written purchase orders, and shall provide for shipment in accordance with LUMINEX’s standard
lead times then in effect. ANY ADDITIONAL OR INCONSISTENT TERMS OR CONDITIONS OF ANY PURCHASE
ORDER, ACKNOWLEDGMENT OR SIMILAR STANDARDIZED FORM GIVEN OR RECEIVED PURSUANT TO THIS AGREEMENT
SHALL HAVE NO EFFECT AND SUCH TERMS AND CONDITIONS ARE HEREBY EXCLUDED. FOR THE AVOIDANCE OF
DOUBT, SUCH TERMS SHALL BE EXCLUDED NOTWITHSTANDING THE FACT THAT ANY SUCH PURCHASE ORDER,
ACKNOWLEDGEMENT OR SIMILAR STANDARDIZED FORM MAY (1) HAVE COME INTO EXISTENCE AFTER THE EFFECTIVE
DATE OF THIS AGREEMENT, OR (2) CONTAIN AN “INTEGRATION CLAUSE” OR SIMILAR LANGUAGE INDICATING THAT
SUCH DOCUMENT SUPERCEDES AND/OR AMENDS ALL PRIOR DOCUMENTS



11









 







AND AGREEMENTS. If the two preceding sentences are held to be ineffective or unenforceable by
any court of competent jurisdiction, the covenants not to sue set forth in Sections 2.1 and 3.1
hereof shall thereupon terminate, notwithstanding any other provision of this Agreement to the
contrary.



     4.3. Delivery. With respect to exact shipping dates, LUMINEX shall use its reasonable
efforts to ship quantities of Beads and Luminex 100 Systems in accordance with purchase orders
submitted and accepted in accordance with Section 4.2 above. All Beads and Luminex 100 Systems
supplied pursuant to the terms of this Agreement shall be suitably packed for shipment by LUMINEX
and marked for shipment to the RBM facility indicated in the RBM purchase order. All Beads and
Luminex 100 Systems will be shipped F.O.B. (U.C.C.) the shipping point designated by LUMINEX. The
carrier shall be selected by agreement between LUMINEX and RBM, provided that in the event no such
agreement is reached, LUMINEX shall select the carrier. All shipping and insurance costs, as well
as any special packaging expenses, shall be paid by RBM.



     4.4. Cancellation or Rescheduling. In the event that LUMINEX does not ship a Luminex
100 System or Beads in accordance with the delivery date set forth in the purchase order for such
Luminex 100 System or Beads, RBM may reschedule or cancel such orders without penalty and at no
cost to RBM upon two (2) days written notice to LUMINEX. RBM will be responsible for the following
cancellation charges when canceling any purchase order less than fifteen (15) days prior to the
scheduled shipping date other than as provided above in this Section 4.4: the cost of any Beads or
Luminex 100 Systems completed before LUMINEX received and accepted the notice canceling the
purchase order, provided such Beads or Luminex 100 Systems were assembled to fulfill the canceled
purchase order.



     4.5. Acceptance. LUMINEX will acknowledge all purchase orders received by LUMINEX
from RBM. All purchase orders provided to LUMINEX by RBM hereunder shall include a shipping date
(“Purchase Order Delivery Date”), and deliveries shall be in accordance with the terms of the
purchase order so accepted by LUMINEX. All shipments and all shipping and other charges shall be
deemed correct unless LUMINEX receives from RBM, no later than thirty (30) days after RBM’s receipt
of a given shipment, a written notice specifying the shipment, the purchase order number, and the
nature of the discrepancy between the order and the shipment or the nature of the discrepancy in
the shipping or other charges, as applicable. LUMINEX agrees to replace, at no additional expense
to RBM, any Beads or Luminex 100 Systems which fail to conform in any material respect to the Bead
Specifications or Luminex 100 System Specifications, respectively, with Beads or Luminex 100
Systems which conform to the Bead Specifications or Luminex 100 System Specifications,
respectively. LUMINEX may analyze any Beads or Luminex 100 Systems rejected by RBM for
nonconformity and if it is objectively established that the Beads or Luminex 100 Systems were
conforming in all material respects, then RBM shall be responsible for payment for such Beads or
Luminex 100 Systems. RBM shall, at LUMINEX’s option, return to LUMINEX or destroy, and provide
written certification of destruction, all Beads which do not conform to the Bead Specifications,
and RBM shall return to LUMINEX all Luminex 100 Systems which do not conform to the Luminex 100
System Specifications. All returns shall be in accordance with LUMINEX’s written instructions and
shall be at LUMINEX’s expense if the Luminex 100 System and/or Beads are
confirmed by LUMINEX as defective.



12









 





     4.6. Changes to Bead Specifications. Following the Closing Date, LUMINEX shall not,
without the prior consent of RBM, make changes to Beads that would adversely affect the
performance, functionality or reliability of Beads delivered to RBM hereunder. Requests for such
consent shall be submitted to RBM at least ninety (90) days prior to the proposed implementation
date of any such modification. RBM shall have the option to accept or reject such modifications in
whole or in part, provided RBM conclusively demonstrates, in LUMINEX’s sole but reasonable opinion,
that such proposed change to the Bead adversely affects the performance, functionality or
reliability of Beads delivered to RBM. Notwithstanding the foregoing, if RBM does not notify
LUMINEX in writing of its rejection of such modification within sixty (60) days of LUMINEX’s
written request, LUMINEX will have the option, in its sole discretion, to make such modifications
without RBM’s prior written consent.



     4.7. Pricing and Royalties.



          (a) Bead Pricing. RBM shall pay LUMINEX for Beads purchased according to the prices
set forth on Exhibit D (the “Bead Prices”). The Bead Prices set forth on Exhibit D
will be effective during the first two (2) years of this Agreement. Thereafter, during the term of
this Agreement, the parties agree to negotiate in good faith Bead prices based upon (i) Luminex’s
then current list Bead prices for similarly situated third party customers and (ii) the volume of
Bead purchases. Notwithstanding the foregoing, the Parties agree to negotiate an equitable
adjustment to the fees for Beads in the event of an increase in Luminex’s cost of Beads or
components thereof purchased from a third party supplier.




          (b) Testing Services Royalties. RBM shall pay to LUMINEX [***] of Testing
Services Net Sales (“Testing Services Royalties”) for so long as the Series A Preferred Stock
remains outstanding and held by LUMINEX. Following the complete redemption of all Series A
Preferred Stock issued to LUMINEX, the Testing Services Royalties payable to LUMINEX set forth in
the preceding sentence shall be reduced to [***] of Net Sales of the Testing Services
(the “Base Testing Services Royalty Amount”).




          (c) Developed Kit Royalties. RBM shall pay to LUMINEX [***] of Developed
Kit Net Sales (“Developed Kit Royalties”) for so long as any of the Series A Preferred Stock issued
to LUMINEX remains outstanding and held by LUMINEX. Following the complete redemption of all Series
A Preferred Stock issued to LUMINEX, the Developed Kit Royalties payable to LUMINEX set forth in
the preceding sentence shall be reduced to [***] of Net Sales of the Developed Kits (the
“Base Developed Kit Royalty Amount”).




          (d) Basis of Reduction of Royalties. For so long as any share of Series A Preferred
Stock issued to LUMINEX is outstanding and held by LUMINEX, the cash amount of Developed Kit
Royalties and Testing Services Royalties above the Base Testing Services Royalty Amount and the
Base Developed Kit Royalty Amount, as the case may be, shall be applied (i) first, to a reduction
of accrued but unpaid dividends on the Series A Preferred Stock held by LUMINEX; and (ii) second,
if all dividends are paid in full, then to a redemption of Series A Preferred Stock held by
LUMINEX.




13









 








          (e) Payment for Initial Elected Field Election of Additional Fields. Within thirty
(30) days of the Effective Date, RBM shall pay to LUMINEX a one-time fee in the amount of [***] (“Initial Field Payment”) to retain the ability to elect
Fields from Exhibit G (“Available Fields”) and place one Elected Field on Exhibit H
(“Elected Fields”). The Initial Field Payment shall be nonrefundable and shall be creditable
against any fees or royalties owed to LUMINEX hereunder, Testing Services Royalties or Developed
Kit Royalties; provided, however, the Initial Field Fee shall not be creditable against the
purchase price of any items and services under this Agreement, including without limitation LUMINEX
100 Systems or Beads purchased by RBM. In the event that RBM elects additional Fields from the
Available Fields, then RBM shall pay to LUMINEX a nonrefundable Field fee of [***] for each such additional Field (“Field Fee”). Notwithstanding the
foregoing, the election to add Available Fields shall be subject to the Field being available
generally to LUMINEX customers. Such additional Field Fees for additional Fields shall be fully
creditable against Developed Product Royalties for three (3) years following the Field Date;
provided however, the Field Fee shall not be creditable against the purchase price of any items or
services under this Agreement, including without limitation LUMINEX 100 Systems or Beads purchased
by RBM.




          (f) Luminex 100 System Pricing. RBM shall pay LUMINEX the amount set forth in
Exhibit B hereto for each unit of the Luminex 100 System (“System Purchase Price”). The
System Purchase Price will be effective during the first two (2) years of this Agreement, after
which time LUMINEX may, at its option, increase the System Purchase Price effective on thirty (30)
days written notice to RBM, provided that such increases may occur no more frequently than once per
year. Notwithstanding the foregoing, the Parties agree to negotiate an equitable adjustment to the
fees for the System Purchase Price in the event of an increase in LUMINEX’s cost of the Luminex 100
System or components thereof purchased from a third party supplier.




     4.8. Conflicts of Interest. It is understood and agreed that RBM may sell the
Developed Products or Luminex 100 Systems to End Users (or Subdistributors) who purchase other
products and services marketed by RBM, and as a result, a conflict of interest may arise. RBM
agrees that RBM shall not discount Developed Products in order to achieve higher sales of, or a
higher sales price for, another product or service marketed by RBM, to a greater degree than RBM
generally discounts the price of other products or services marketed by RBM to a third party. RBM
further agrees that RBM will not price, discount, bundle, market, promote or distribute the
Developed Products in a manner that would disadvantage the Developed Products in comparison with
such other products or services marketed by RBM.



     4.9. Invoice. LUMINEX shall submit an invoice to RBM upon shipment of Beads or
Luminex 100 Systems ordered by RBM hereunder. All invoices shall be sent to the address as
specified in the purchase order therefor or other address as designated by RBM in writing, and each
such invoice shall state the fees due for Beads or Luminex 100 Systems in a given shipment, plus
any insurance, taxes or other costs incident to the purchase or shipment initially paid by LUMINEX
but to be borne by RBM hereunder.



     4.10. Reporting and Payment. Payment of the Bead Prices and the System Purchase Price
shall be made within thirty (30) days of RBM’s receipt of an invoice therefor. Within ten



14









 




(10) days of the end of a given calendar quarter, RBM shall submit to LUMINEX a written report
estimating the amount of Testing Services Royalties and Developed Kit Royalties payable to LUMINEX
for the prior calendar quarter. Forty-five (45) days from the date of such report, RBM shall pay
LUMINEX the full amount of Testing Services Royalties (or Base Testing Services Royalties, if
applicable) and Developed Kit Royalties (or Base Developed Kit Royalties, if applicable) due for
the prior calendar quarter and include a full report setting forth the amount of royalties payable
to LUMINEX for such calendar quarter and all supporting data and calculations used by RBM to
compute such royalties (“Royalty Report”). Such Royalty Report shall also provide to LUMINEX an
allocation of such payments that (i) constitute service or product revenue, (ii) constitute a
dividend payment, or (iii) constitute a redemption of Series A Preferred Stock. All payments
hereunder shall be made in U.S. Dollars in the United States by: (i) direct bank transfer to an
account designated in LUMINEX’s invoice, (ii) check, or (iii) other form of payment acceptable to
and approved in advance by LUMINEX. In the event that RBM is unable to make such payments in the
United States, due solely to its inability to export funds from a country of the Territory, RBM
shall notify LUMINEX immediately, and if so instructed by LUMINEX, deposit all monies due LUMINEX
in an account of LUMINEX in a local bank of LUMINEX’s choice within the Territory. Any late
payments shall bear interest at the rate of one percent (1.0%) per month or the highest rate
permitted under applicable law, whichever is less, based on the number of days overdue.




     4.11. Taxes.



          (a) Any and all amounts payable hereunder do not include any government taxes (including
without limitation sales, use, excise, and value added taxes) or duties imposed by any governmental
agency that are applicable to the export, import, or purchase of the Beads or the Luminex 100
Systems (other than taxes on the net income of LUMINEX), and RBM shall bear all such taxes and
duties. When LUMINEX has the legal obligation to collect and/or pay such taxes, the appropriate
amount shall be added to RBM’s invoice and paid by RBM, unless RBM provides LUMINEX with a valid
tax exemption certificate authorized by the appropriate taxing authority.




          (b) All payments by RBM specified hereunder are expressed as net amounts and shall be made
free and clear of, and without reduction for, any withholding taxes. Any such taxes which are
otherwise imposed on payments to LUMINEX shall be the sole responsibility of RBM. RBM shall
provide LUMINEX with official receipts issued by the appropriate taxing authority or such other
evidence as is reasonably requested by LUMINEX to establish that such taxes have been paid. If
LUMINEX uses a foreign tax credit received by LUMINEX as a result of the payment of withholding
taxes by RBM and thereby reduces the amount of U.S. income tax that LUMINEX otherwise would have
paid, LUMINEX shall refund to RBM the amount of such reduction with respect to such foreign tax
credit.




     4.12. Currency Conversion. If any currency conversion shall be required in connection
with the calculation of amounts payable under this Agreement, such conversion shall be made using
the selling exchange rate for conversion of the foreign currency into U.S. Dollars, quoted for
current transactions reported by The Wall Street Journal (New York Edition) for the last business
day of the calendar month to which such payment pertains.



15









 





     4.13. Records; Inspection. RBM shall keep complete, true and accurate books of
accounts and records for the purpose of determining the amounts payable under this Article 4 for at
least three (3) years following the end of the calendar quarter to which they pertain. Such books
and records will be open for inspection during such three (3)-year period by an independent auditor
chosen by LUMINEX at RBM’s site for the purpose of verifying the amounts payable by RBM under this
Article 4. The foregoing right shall be subject to such auditor executing a confidentiality
agreement with RBM. Such on-site inspections may be made no more than once each calendar year, at
reasonable times and on reasonable notice. Inspections conducted under this Section 4.13 shall be
at the expense of LUMINEX, unless a variation or error producing an underpayment in amounts payable
exceeding five percent (5%) of the amount paid for any period covered by the inspection is
established in the course of any such inspection, whereupon all costs relating to the inspection
for such period and any unpaid amounts that are discovered shall be paid by RBM, together with
interest as specified in Section 4.10 above. The parties will endeavor to minimize disruption of
RBM’s normal business activities to the extent reasonably practicable.



     4.14. Forecasts. Within thirty (30) days prior to the end of each calendar quarter,
RBM shall provide LUMINEX a rolling six-month forecast of delivery requirements of Beads and
Luminex 100 Systems for the next two succeeding calendar quarters (“Forecast”). The Forecasts
shall constitute RBM’s good faith estimates of RBM’s requirements, but shall be nonbinding upon
either party.



     4.15. Manufacturing Capacity.



          (a) Back-Up Manufacturing Right. A “Supply Failure” shall mean a failure, in any two
(2) consecutive calendar quarters, beginning at least six (6) months after RBM’s first commercial
sale of a Developed Product, to supply RBM with at least seventy-five percent (75%) of the
aggregate quantity of Beads or Luminex 100 Systems, as applicable, ordered pursuant to Section 4.2
by RBM for such two (2) consecutive calendar quarters. Notwithstanding the foregoing, in the event
that an order by RBM is fifty percent (50%) or more than the amount forecasted in the most recent
previous Forecast, LUMINEX will use commercially reasonable efforts to fulfill the order, but in no
event shall any failure on the part of LUMINEX to fulfill such an order be deemed a Supply Failure.
In the event of such Supply Failure, RBM shall have a back-up supply right as set forth below (the
“Back-Up Right”) subject to the additional terms and conditions set forth below or in the Escrow
Agreement (as identified below).




          (b) Escrow. The parties will start negotiating a beneficiary designation agreement
adding RBM to the escrow agreement attached hereto as Exhibit E (the “Escrow Agreement”)
within ninety (90) days of the execution of this Agreement. LUMINEX agrees to deposit, subject to
Section 4.15(c) below, in the technology escrow account with the third party escrow agent under the
Escrow Agreement all technical information, know-how, supplier lists, bill of materials and related
information covering Beads and Luminex 100 Systems that is owned or controlled by LUMINEX and is
necessary for the manufacture of Beads and Luminex 100 Systems but in all events excluding Software
source code (the “Escrowed Materials”). For purposes of this Section 4.15(b), “control” means the
ability to grant the rights set forth in Section 4.15(c) without payment of royalties or other
consideration to third parties. The



16









 






Escrowed Materials are to be released to RBM in the event of a Supply Failure, all as to be
specified in more detail in the Escrow Agreement.




          (c) Rights. Upon the occurrence of a Supply Failure, the immunity from suit granted
under Section 3.1 shall include the right to manufacture Beads and Luminex 100 Systems. Upon the
occurrence of a Supply Failure, at RBM’s option, RBM may manufacture or have manufactured, such
percentage of RBM’s requirements for Luminex 100 Systems and Beads as LUMINEX has failed to supply
at royalty rates to be negotiated in good faith by the parties; provided that in the event that RBM
elects to exercise this option, LUMINEX shall have no further obligation to supply such quantities
of Beads or Luminex 100 Systems to RBM. In the event that LUMINEX cures its Supply Failure,
LUMINEX may terminate the rights provided to RBM under this Section 4.15(c) upon thirty (30) days
written notice to RBM.




ARTICLE 5

EXCLUSIVITY OF EFFORTS AND COMPLIANCE WITH LAWS




     5.1. Exclusivity of Efforts. To avoid conflicts of interest, RBM and its Affiliates
will not utilize, develop, manufacture, market, sell or otherwise distribute any materials,
technologies or products that are used in performing Multiplexed Bead Assays other than Luminex 100
Systems, Beads and Developed Products. In addition, RBM agrees that except for performing its
development obligations pursuant to Section 2.1, RBM will not directly or indirectly utilize or
develop any materials, technologies or products that are used in performing Multiplexed Bead
Assays.



     5.2. Compliance with Laws. The parties agree to cooperate, including without
limitation, providing required documentation, in order to obtain export licenses or exemptions
therefrom. RBM warrants that it will comply in all material respects with applicable laws and
regulations governing imports and exports in effect from time to time. LUMINEX warrants that it
will comply in all material respects with applicable laws and regulations of the United States and
all countries in Europe governing imports and exports in effect from time to time. In performing
this Agreement, each party shall comply with all applicable treaties, laws and regulations and
shall not be required or permitted under this Agreement if such performance or omission would
violate the provisions of any such treaty, law or regulation. Accordingly, RBM shall also
manufacture Developed Products in accordance with applicable regulations, as the same may be
amended from time to time.



ARTICLE 6

MAINTENANCE, SUPPORT AND TRAINING




     6.1. Maintenance and Support. RBM will provide front-line support to End Users of the
Developed Products purchased from it. LUMINEX will provide maintenance for Luminex 100 Systems at
customer sites, if required and as requested by RBM, such maintenance to be charged on a time and
materials basis (including travel) to be set by LUMINEX yearly during the term hereof. LUMINEX
shall have the right to discontinue such back-up support upon reasonable notice to RBM.



     6.2. Training. At RBM’s request, LUMINEX will provide a two-day training course



17









 







in use of the Luminex 100 System to End User purchasers of the Luminex 100 System, including
lunch and study materials, at LUMINEX’s facilities in Austin, Texas. For each Luminex 100 System
purchased, such training course will be provided free of charge to one individual, provided that
such training occurs within six (6) months of following the shipment of such Luminex 100 System.
The cost for each additional person attending the training will be LUMINEX’s standard charge for
such training.



ARTICLE 7

WARRANTIES




     7.1. Limitations. THE WARRANTY SET FORTH IN THIS ARTICLE 7 IS APPLICABLE ONLY TO
LUMINEX 100 SYSTEMS, BEADS AND OTHER LUMINEX PRODUCTS, EXCLUDING RBM GENERATED INTELLECTUAL
PROPERTY, (COLLECTIVELY REFERRED TO HEREIN AS, “PRODUCTS”) INITIALLY SOLD AND THEREAFTER LOCATED IN
NORTH AMERICA AND THE COUNTRIES THAT COMPRISE THE EUROPEAN UNION. LUMINEX MAKES NO WARRANTY,
EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, WITH RESPECT TO THE RBM GENERATED INTELLECTUAL PROPERTY, WHICH IS LICENSED HEREUNDER ON AN
“AS IS, WHERE IS” BASIS. FURTHERMORE, LUMINEX MAKES NO WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT
TO PRODUCTS SOLD, DISTRIBUTED, LOCATED OR USED OUTSIDE OF NORTH AMERICA AND THE COUNTRIES THAT
COMPRISE THE EUROPEAN UNION. PRODUCTS SOLD OUTSIDE OF NORTH AMERICA AND THE COUNTRIES THAT
COMPRISE THE EUROPEAN UNION ARE SOLD ONLY ON AN “AS IS, WHERE IS” BASIS. TO THE EXTENT THAT THE
FOREGOING DISCLAIMERS ARE INVALID OR UNENFORCEABLE UNDER THE LAWS OF ANY JURISDICTION, THE
WARRANTY, DISCLAIMER, LIMITATION OF LIABILITY AND OTHER PROVISIONS SET FORTH BELOW SHALL THEREUPON
BE EFFECTIVE TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW.



     7.2. Limited Warranty. LUMINEX warrants that the Products shall conform in all
material respects to the applicable specifications therefor as provided to RBM by LUMINEX through
LUMINEX’s designated product specifications. THIS WARRANTY IS EXCLUSIVE AND LUMINEX MAKES NO OTHER
WARRANTY, EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE. LUMINEX’s warranties made in connection with this sale shall not be effective
if LUMINEX has determined, in its sole discretion, that RBM or any End User has misused, improperly
installed, operated, maintained or repaired the Products in any manner, has failed to used the
Products in accordance with industry standards or practices, has failed to use the Products in
accordance with instructions, if any, furnished by LUMINEX or has installed any software on the
Luminex 100 System. LUMINEX makes no warranty, express or implied, including any implied warranty
of merchantability or fitness for a particular purpose with respect to the RBM Generated
Intellectual Property, which is licensed hereunder on an “as is, where is” basis.



18









 





     7.3. Exclusive Remedy. LUMINEX’S SOLE AND EXCLUSIVE LIABILITY AND
RBM’S OR ANY END USER’S EXCLUSIVE REMEDY WITH RESPECT TO PRODUCTS PROVED TO LUMINEX’S
REASONABLE SATISFACTION TO BE DEFECTIVE OR NONCONFORMING SHALL BE REPLACEMENT OF SUCH PRODUCTS
WITHOUT CHARGE OR REFUND OF THE PURCHASE PRICE, IN LUMINEX’S SOLE DISCRETION, UPON THE RETURN OF
SUCH PRODUCTS IN ACCORDANCE WITH LUMINEX’S INSTRUCTIONS. LUMINEX SHALL NOT IN ANY EVENT BE LIABLE
FOR INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES OF ANY KIND RESULTING FROM ANY USE OR FAILURE OF
THE PRODUCTS, EVEN IF LUMINEX HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE INCLUDING, WITHOUT
LIMITATION, LIABILITY FOR LOSS OF WORK IN PROGRESS, DOWN TIME, LOSS OF REVENUE OR PROFITS, FAILURE
TO REALIZE SAVINGS, LOSS OF PRODUCTS OF RBM OR OTHER USE OR ANY LIABILITY OF RBM TO A THIRD PARTY
ON ACCOUNT OF SUCH LOSS, OR FOR ANY LABOR OR ANY OTHER EXPENSE, DAMAGE OR LOSS OCCASIONED BY SUCH
PRODUCT, INCLUDING PERSONAL INJURY OR PROPERTY DAMAGE UNLESS SUCH PERSONAL INJURY OR PROPERTY
DAMAGE IS CAUSED BY LUMINEX’S GROSS NEGLIGENCE. ANY ACTION FOR BREACH OF CONTRACT WITH RESPECT TO
ALL PRODUCTS SOLD HEREUNDER SHALL BE COMMENCED, AND ANY CLAIMS FOR BREACH OF CONTRACT MUST BE
RECEIVED, WITHIN ONE (1) YEAR OF SHIPMENT, REGARDLESS OF THEIR NATURE. THE LIMITATIONS OF WARRANTY
AND LIABILITY SET FORTH HEREIN SHALL SURVIVE THE CANCELLATION, COMPLETION OR OTHER TERMINATION OF
THIS CONTRACT FOR ANY REASON.



     7.4. RBM’s Warranties. RBM agrees not to represent the Beads or Luminex 100 System in
a manner that is inconsistent with the applicable Specifications or otherwise misrepresent the
Beads or Luminex 100 System. RBM warrants to LUMINEX as of the Closing Date that RBM is unaware of
any provisions in the End User Agreements or this Agreement that would be unenforceable or fail to
achieve their essential purpose under prevailing laws in the Territory. RBM agrees to act in good
faith to carry out the provisions of this Agreement and to utilize the Luminex 100 System and Beads
for the RBM Business pursuant to the terms and conditions hereof.



ARTICLE 8

TERM AND TERMINATION




     8.1. Term. The term of this Agreement shall commence on the Effective Date and
continue in full force and effect until the later of (a) the life of the LUMINEX Intellectual
Property Rights, or (b) the life of the RBM Generated Intellectual Property Rights (the “Term”).



     8.2. Termination Shall Not Affect Royalties. Notwithstanding anything herein to the
contrary, termination of this Agreement shall not relieve RBM of its obligation to pay LUMINEX
royalties under Article 4 hereof for so long as RBM continues to receive revenues from third
parties for the provision of Testing Services, Net Sales from Developed Kits or as otherwise
contemplated by Section 2.2, as the case may be; provided that, in no event shall RBM be obligated
to pay LUMINEX royalties if a material portion (in the joint opinion of LUMINEX and RBM) of the
Patents in the LUMINEX Intellectual Property Rights or RBM Generated



19









 







Intellectual Property, as the case may be, expire, have been terminated or abandoned or
invalidated, unless, despite termination, abandonment or invalidation of a material portion of
Patents in the LUMINEX Intellectual Property Rights or RBM Generated Intellectual Property, as the
case may be, the Testing Services and Developed Kits or royalties contemplated in Section 2.2
hereof are still covered by material claims in those remaining Patent or Patents in the LUMINEX
Intellectual Property Rights or RBM Generated Intellectual Property, as the case may be, that were
not terminated, abandoned or invalidated. In the event LUMINEX and RBM cannot agree upon the issue
of materiality set forth above, either or both of them may refer the matter to binding arbitration
in accordance with the then applicable rules of the AAA, at their joint expense, and until the
matter is finally determined, RBM shall continue to pay royalties under the provisions of Section
4.7 or Section 2.2, as the case may be, subject to refund based upon the arbitrators’
determination, if applicable.



     8.3. Termination for Breach. This Agreement may be terminated by written notice of
termination to the other party effective immediately: (i) by LUMINEX if RBM breaches Section 2.3
(RBM Restrictions), Section 5.1 (Exclusivity of Effort), or termination pursuant to Sections 8.4 or
8.5 (Failure to Commercialize); and (ii) by RBM if LUMINEX breaches Section 2.4 (Restrictions on
Luminex). In addition, either party may terminate this Agreement if the other party breaches any
material term or condition of this Agreement and fails to remedy the breach within ninety (90)
days, with the exception of Section 4.7 (Royalties) for which the cure period shall be thirty (30)
days, after being given written notice of such breach and intent of the non-breaching party to
terminate.



     8.4. Termination for Failure to Commercialize within an Elected Field. If RBM fails to
meet all the terms and conditions of Section 2.5 regarding commercialization in each Field, then
LUMINEX, at its sole discretion, may terminate the Agreement, but only with respect to the
particular Elected Field as to which RBM failed to meet the Section 2.5 conditions; and subject to
six (6) months prior written notice by LUMINEX to RBM of its intent to terminate, and RBM’s failure
to comply with Section 2.5 within such six (6) month period.



     8.5. Termination for Failure to Commercialize within the Territory. If RBM fails to
meet all the terms and conditions of Section 2.6 regarding commercialization in an individual
country or countries within the Territory, then LUMINEX, at its sole discretion, may terminate this
Agreement, but only with respect to the particular country or countries in which RBM failed to meet
the Section 2.6 conditions; and subject to six (6) months prior written notice by LUMINEX to RBM of
its intent to terminate, and RBM’s failure to comply with Section 2.6 within such six (6) month
period.



     8.6. Liquidated Damages for Disclosure In Violation of Section 2.4. In the event that
RBM contends that LUMINEX has disclosed Confidential Information (as defined in Article 10 below)
in violation of Section 2.4 hereof, LUMINEX shall only be deemed in breach of Section 2.4 on the
date on which a final determination is rendered by a panel of three arbitrators in accordance with
the then applicable rules of the AAA and its Expedited Procedure provisions that LUMINEX has, in
fact, willfully and intentionally breached Section 2.4 through a person or persons who at such time
of the breach is/are officers of Luminex (or who acted at the direction of officers) and such
action is not the act of one or more persons acting expressly against



20









 







LUMINEX policy (i.e. an intentional “bad actor” expressly acting against the intentions of
Luminex, as an entity), then the remedy shall be (i) Section 5.1 hereof shall terminate
immediately, (ii) cancellation in its entirety of all outstanding Series A Redeemable Preferred
Stock of RBM and accrued but unpaid dividends held by LUMINEX and (iii) an amount payable to RBM
equal to fifty percent (50%) of any payment made to LUMINEX by a third party in connection with the
disclosure, license, transfer or other provision of Confidential Information in violation of
Section 2.4. The remedies above constitute liquidated damages and with respect to a violation of
Section 2.4 of the Agreement and, except as set forth in Section 8.3, are the sole remedies for
violation of such section and such remedies shall not be limited by Section 12.6.



     8.7. Effect of Termination or Expiration. It is understood that termination of this
Agreement shall not relieve a party from any liability that, at the time of such termination, has
already accrued to the other party. The following sections shall survive the expiration or
termination, for any reason, of this Agreement: Articles 1 (to the extent referenced in other
surviving sections), 7 (Warranties), 10 (Confidentiality), 11 (Indemnification), 12
(Miscellaneous), and Sections 2.2 (RBM Generated IP License), 2.9 (Ownership of Intellectual
Property ), 3.2 (Reservation of Rights), 3.3 (No Right to Manufacture or Modify), 3.4 (End User
Restrictions), 3.5 (Luminex License), 3.6 (Subdistributors), 4.13 (Records; Inspection), 8.2
(Termination Shall Not Affect Royalties), 8.6 (Liquidated Damages for Disclosure in Violation of
Section 2.4), 8.8 (Termination), and this Section 8.7 (Effect of Termination/Expiration). All
other Sections shall terminate upon the expiration or termination, for any reason, of this
Agreement except as provided in Sections 8.8 below. Except as otherwise expressly provided in this
Article 8, all other rights and obligations of the parties shall terminate upon termination of this
Agreement.



     8.8. Rights Upon Termination by Either Party. In the event of termination of the
Agreement by either party pursuant to Section 8.3: (a) RBM may, at RBM’s option, sell Luminex 100
Systems and Developed Products existing in its inventory as of the effective date of termination of
this Agreement (provided that the applicable Testing Services Royalties and Developed Kit Royalties
are paid to LUMINEX pursuant to Section 4.7); and (b) in addition to the provisions in Section 8.7,
the provisions of Sections 3.1 (immunity from suit), 2.3 (Restrictions on RBM), 2.4 (Restrictions
on LUMINEX), 4.2 (Orders), 4.7 (Pricing and Royalties), 4.8 (Conflicts of Interest), 4.10
(Reporting and Payment), and 4.11 (Taxes) shall survive but only during the period during which RBM
has a continuing right to sell Developed Products and/or Luminex 100 Systems pursuant to
subparagraph 8.8(a) above.



21









 





ARTICLE 9

LUMINEX TRADEMARKS




     9.1. Trademarks. Subject to the provisions of this Article 9, during the term of this
Agreement, RBM shall advertise the Beads and Luminex 100 System under the trademarks, marks, and
trade names of LUMINEX set forth in Exhibit C, as same may be amended in writing by LUMINEX
from time to time (“LUMINEX’s Trademarks”), in a manner agreed upon in writing by the parties.
RBM’s use of the LUMINEX’s Trademarks in connection with the branding of Developed Products shall
be subject to LUMINEX’s prior inspection and written approval. RBM shall not modify LUMINEX’s
branding of Luminex 100 Systems. All representations of LUMINEX’s Trademarks that RBM intends to
use shall first be submitted to LUMINEX for approval (which shall not be unreasonably withheld) of
design, color and other details, or shall be exact copies of those used by LUMINEX. RBM shall
fully comply with all guidelines, if any, communicated by LUMINEX concerning the use of LUMINEX’s
Trademarks. LUMINEX may modify any LUMINEX Trademarks, or substitute an alternative mark for any
LUMINEX Trademark, upon sixty (60) days prior notice to RBM.



     9.2. Use. RBM shall not alter or remove any of LUMINEX’s Trademarks affixed to or
otherwise contained on or within the Luminex 100 Systems, the Beads or the packaging or
documentation therefor. All uses of LUMINEX’s Trademarks will inure solely to LUMINEX, RBM shall
obtain no rights with respect to any of LUMINEX’s Trademarks, other than as expressly set forth
herein, and RBM irrevocably assigns to LUMINEX all such right, title and interest, if any, in any
of LUMINEX’s Trademarks. At no time during or after the term of this Agreement may RBM challenge
or assist others to challenge LUMINEX’s Trademarks (except to the extent expressly required by
applicable law) or the registration thereof or attempt to register any trademarks, marks or trade
names confusingly similar to those of LUMINEX. LUMINEX and RBM shall enter into registered user
agreements with respect to the LUMINEX’s Trademarks pursuant to applicable trademark law
requirements worldwide. RBM shall be responsible for proper filing of the registered user
agreement with government authorities for those countries listed in the Territory and shall pay all
costs or fees associated with such filing.



ARTICLE 10

CONFIDENTIALITY




     10.1. Non-Disclosure. For purposes of this Agreement, “Confidential Information”
includes, without limitation, technical information, know-how, customers, marketing strategies,
business practices and any other confidential or proprietary information relating to the business,
products, technology or finances of a party hereto and designated in writing at the time of
disclosure as “Confidential” or, in the event of oral disclosure, confirmed to be “Confidential” in
writing within thirty (30) days after the initial oral disclosure, or any information of a third
party that has disclosed the information under a confidentiality arrangement with a party hereto.
Notwithstanding the foregoing, all information disclosed by LUMINEX with respect to the Luminex 100
System, Beads or RBM Generated Intellectual Property or any portion thereof shall be deemed
“Confidential Information” of LUMINEX. Except as permitted under this Agreement, each party will
keep completely confidential and will not publish or otherwise



22









 







disclose (except to its Affiliates, employees, agents or consultants having a need to know)
and will not use for any purpose except for the purposes contemplated by this Agreement, any
Confidential Information of the other party disclosed during the term of this Agreement.
Notwithstanding the generality of the foregoing, except as expressly permitted under this
Agreement, each party shall (a) hold all Confidential Information received from the other party in
strict confidence; (b) use the Confidential Information only in connection with performance under
this Agreement; (c) reproduce the Confidential Information only to the extent necessary for the
purpose set forth in (b); (d) not provide, disclose, permit to be disclosed, or otherwise make
available such Confidential Information, directly or indirectly, to any third party without the
prior written approval of the other party or as permitted by law; (e) reasonably maintain
Confidential Information in an appropriate and secure environment, both physically and
electronically; (f) take reasonable measures to protect the confidentiality of and avoid
disclosure, loss or use of the Confidential Information in order to prevent it from falling into
the public domain or the possession of any third party; and (g) notify the other party in writing
of any loss, misuse or misappropriation of the Confidential Information which may come to the
party’s attention. Each party will use at least the same standard of care as it uses to protect its
own proprietary or confidential information to ensure that its Affiliates, employees, agents and
consultants do not disclose or make unauthorized use of the Confidential Information, but in no
event less than reasonable care.



     10.2. Exceptions. Confidential Information shall not include any information which the
receiving party can prove by competent evidence: (a) is now, or hereafter becomes, through no act
or failure to act on the part of the receiving party, generally known or available; (b) is known by
the receiving party at the time of receiving such information, as evidenced by its records; (c) is
hereafter furnished to the receiving party by a third party having the legal right to do so and
without restriction on disclosure; (d) is independently developed by the receiving party without
the aid, application or use of the Confidential Information; or (e) is required to be disclosed by
law or court order.



ARTICLE 11

 INDEMNIFICATION




     11.1. LUMINEX Indemnity. LUMINEX shall defend and/or settle any claim, complaint,
suit, proceeding or cause of action (collectively and individually referred to as a “Claim” in this
Section 11.1) brought against RBM by a third party for infringement of any third party copyright or
patent issued as of the Effective Date by the Luminex 100 System and Beads as delivered by LUMINEX
or its Affiliates or distributors. LUMINEX shall pay all resulting damages or settlement amounts
finally awarded against RBM (including reasonable attorneys’ fees, legal expenses and court costs)
to the extent attributable to such Claim. Notwithstanding the provisions of this Section 11.1,
LUMINEX will not have any obligation under this Article 11 to the extent a Claim for infringement
is based upon (i) indirect or contributory infringement, (ii) a modified Luminex 100 System, Beads
or any portion thereof if such infringement would have been avoided by use of the Luminex 100
System, Beads or portion thereof as provided by LUMINEX, (iii) use of the Luminex 100 System, Beads
or any portion thereof in applications or for purposes other than for which the same were intended
within the Field, (iv) completed products or equipment or any assembly, combination, method or
process in which the Luminex



23









 




100 System or Beads are used, to the extent the infringement would not have resulted if the
Luminex 100 System or Beads were used alone, (v) continuation of allegedly infringing activity
after being provided modifications that would have avoided the alleged infringement without
materially altering the functionality of the Luminex 100 System or Beads, (vi) the development,
design, manufacture, use, handling, storage, importation, sale, distribution or other disposition
of Developed Products, and (vii) RBM’s manufacture, use or sale of products or services that use
the RBM Generated Intellectual Property. RBM shall (x) promptly notify LUMINEX of each Claim, (y)
provide LUMINEX with sole control over the defense and/or settlement thereof, and (z) at LUMINEX’s
request and expense, provide full information and reasonable assistance to LUMINEX with respect to
such Claims. In addition, in the event that LUMINEX fails to assume the defense of any such Claim,
and provided that RBM has fulfilled its obligations under clauses (x), (y) and (z) above, then RBM
may give the LUMINEX written notice of such failure and an opportunity to cure such failure within
thirty (30) days. In the event that LUMINEX does not assume the defense of such Claim within such
cure period, then LUMINEX shall further be obligated to indemnify and hold RBM harmless for RBM’s
reasonable costs and expenses (including reasonable attorneys’ fees) incurred in the defense or
settlement of such Claim; provided, any settlement must be approved by LUMINEX.




     11.2. Alternatives. Without limiting Section 11.1 above, if the Beads or Luminex 100
Systems or any portion thereof are, or in LUMINEX’s reasonable judgment may become, the subject of
any Claim of infringement of third party intellectual property rights, or if a court determines
that the Beads or Luminex 100 Systems or any portion thereof infringes any third party intellectual
property rights, LUMINEX, at its option and expense, may (i) procure for RBM the right under such
third party intellectual property rights to use the Beads or Luminex 100 Systems in accordance with
the terms and conditions of this Agreement; or (ii) replace the infringing portion of the Luminex
100 Systems or Beads with other suitable noninfringing product having functionality substantially
the same as the infringing portion of the Luminex 100 System or Beads so replaced; or (iii) modify
the Luminex 100 System or Beads to make the same noninfringing; or (iv) in the event (i), (ii) or
(iii) above are not commercially practicable in LUMINEX’s judgment, require that RBM remove the
Luminex 100 Systems and/or Beads or any portion thereof from use, in which event LUMINEX may
terminate this Agreement by written notice to RBM.



     11.3. RBM Indemnity. Except for warranty claims for which LUMINEX is liable under
Article 7 and infringement claims covered by Section 11.1, RBM shall indemnify, defend and/or hold
LUMINEX its officers, directors, employees and agents (“Indemnified Parties”) harmless from any
cost, loss, damages, liability or expense arising out of a third party claim, complaint, suit,
proceeding or cause of action (collectively and individually referred to as a “Claim” in this
Section 11.3) arising out of or relating to RBM or its Affiliates’ or Subdistributors’ (a)
manufacture, development, design, use, handling, storage, importation, sale, distribution or other
disposition of Developed Products or provision of Testing Services; or (b) use of the RBM Generated
Intellectual Property. LUMINEX shall (i) promptly notify RBM of each Claim, (ii) provide RBM with
sole control over the defense and/or settlement thereof, and (iii) at RBM’s request and expense,
provide full information and reasonable assistance to RBM with respect to such Claims. In the
event that RBM fails to assume the defense of any such Claim and provided that LUMINEX has
fulfilled its obligations under clauses (i), (ii) and (iii)



24









 







above, or LUMINEX determines in its reasonable discretion, RBM cannot adequately represent
LUMINEX’s interests, then LUMINEX may assume the defense of any such Claim and RBM shall further be
obligated to indemnify and hold LUMINEX harmless for LUMINEX’s reasonable costs and expenses
(including reasonable attorneys’ fees) incurred in the defense or settlement of such Claim;
provided, any settlement must be approved by RBM.



ARTICLE 12

MISCELLANEOUS




     12.1. Governing Law. THIS AGREEMENT SHALL BE GOVERNED BY, AND CONSTRUED AND
INTERPRETED IN ACCORDANCE WITH, THE LAWS OF THE UNITED STATES AND THE STATE OF TEXAS WITHOUT
REFERENCE TO CONFLICT OF LAWS PRINCIPLES AND EXCLUDING THE 1980 U.N. CONVENTION ON CONTRACTS FOR
THE INTERNATIONAL SALE OF GOODS.



     12.2. Jurisdiction; Venue. ALL DISPUTES ARISING OUT OF OR RELATED TO THIS AGREEMENT
WILL BE SUBJECT TO THE EXCLUSIVE JURISDICTION AND VENUE OF THE TEXAS STATE COURTS OF TRAVIS COUNTY,
TEXAS (OR, IF THERE IS EXCLUSIVE FEDERAL JURISDICTION, THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF TEXAS), AND THE PARTIES CONSENT TO THE PERSONAL AND EXCLUSIVE JURISDICTION OF
THESE COURTS.



     12.3. Force Majeure. Except with respect to payment obligations, nonperformance of
any party shall be excused to the extent that performance is rendered impossible by strike, fire,
earthquake, flood, governmental acts or orders or restrictions, failure or delay of suppliers, or
any other reason where failure to perform is beyond the reasonable control of the nonperforming
party; provided, however, if a party is so delayed or prevented from performing its obligations
under this Agreement for a period of sixty (60) days, the other party shall have the right (but not
the obligation) to terminate this Agreement at the end of such sixty (60) day period, without any
right of cure on the part of such party.



     12.4. Assignment. Except as set forth in Section 2.2, RBM’s rights and obligations
under this Agreement may not be assigned or otherwise transferred to a third party without the
prior written consent of LUMINEX, which consent shall not be unreasonably withheld. Subject to
Section 2.4, LUMINEX may assign or otherwise transfer its rights and obligations under this
Agreement without RBM’s prior consent. Any assignment or any attempted assignment by either party
in violation of this Section 12.4 shall be null and void. Subject to the foregoing, this Agreement
shall be binding upon and inure to the benefit of the parties hereto, their successors and assigns.



     12.5. Notices. Any notice or report required or permitted to be given or made under
this Agreement by either party shall be in writing and delivered by certified mail or by confirmed
facsimile to the other party at its address indicated below (or to such other address as a party
may specify by notice hereunder).



25









 





	 	 	 	 	 
	 

	 	If to LUMINEX:
	 	Luminex Corporation
	 

	 	 	 	12212 Technology Boulevard
	 

	 	 	 	Austin, Texas 78727
	 

	 	 	 	Attention: General Counsel
	 

	 	 	 	Fax: (512) 219-6325
	 
	 	 	 	 
	 

	 	If to RBM:
	 	RBM Acquisition, Inc.
	 

	 	 	 	4 Niles Road
	 

	 	 	 	Austin, Texas 78703






     12.6. Limitation of Liability.



          (a) LUMINEX Limitation of Liability. LUMINEX’s liability arising out of this Agreement
(excluding the indemnification provisions hereof relating to third party claims set forth in
Section 11.1) and/or the sale of Beads, Luminex 100 Systems or portions thereof shall be limited to
the aggregate amounts paid by RBM to LUMINEX for the Beads, Luminex 100 Systems and royalties under
this Agreement.




          (b) RBM Limitation of Liability. RBM’s liability arising out of this Agreement
(excluding the indemnification provisions hereof relating to third party claims set forth in
Section 11.3) shall be limited to the aggregate Net Sales received by RBM for the use, distribution
and sale of Luminex 100 Systems, Developed Products, products utilizing the RBM Generated
Intellectual Property, and other products contemplated by Section 2.2.




          (c) Exceptions to Limitations of Liability. NOTWITHSTANDING THE FOREGOING, THE
LIMITATIONS IN SECTIONS 12.6(a) AND 12.6(b) SHALL NOT APPLY TO A LEGAL ACTION DIRECTLY BETWEEN
LUMINEX AND RBM WHICH SEEKS TO RECOVER ANY DAMAGES THAT (I) MAY RESULT FROM THE UNAUTHORIZED
DISCLOSURE OF ANY CONFIDENTIAL INFORMATION OR TRADE SECRET, OR (II) MAY RESULT FROM THE
INFRINGEMENT OR MISAPPROPRIATION OF ANY PATENT, COPYRIGHT, TRADEMARK, SERVICE MARK, TRADE SECRET OR
OTHER INTELLECTUAL PROPERTY OR PROPRIETARY RIGHTS. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE
OTHER PARTY OR ANY OTHER PERSON FOR ANY SPECIAL, CONSEQUENTIAL, EXEMPLARY, INCIDENTAL OR PUNITIVE
DAMAGES (INCLUDING LOST OR ANTICIPATED REVENUES OR PROFITS RELATING TO THE SAME), ARISING FROM OR
RELATING TO THIS AGREEMENT OR THE SUBJECT MATTER HEREOF, WHETHER BASED IN CONTRACT, TORT (INCLUDING
NEGLIGENCE OR STRICT LIABILITY) OR OTHERWISE, AND EVEN IF SUCH PARTY IS ADVISED OF THE POSSIBILITY
OR LIKELIHOOD OF SAME. THE LIMITATIONS IN THIS SECTION 12.6 SHALL APPLY NOTWITHSTANDING ANY
FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY PROVIDED HEREIN.




          (d) Upon Termination. In the event of termination of this Agreement by either party
in accordance with any of the provisions hereof, neither party shall be liable to the other,
because of such termination, for compensation, reimbursement or damages on account of the loss of
prospective profits or anticipated sales or on account of expenditures, inventory,



26









 






investments, leases or commitments in connection with the business or goodwill of LUMINEX or
RBM. Termination shall not, however, relieve either party of obligations incurred prior to the
termination.




     12.7. Foreign Corrupt Practices Act. In conformity with the United States Foreign
Corrupt Practices Act and with LUMINEX’s established corporate policies regarding foreign business
practices, RBM, its Subdistributors and their respective employees and agents shall not directly or
indirectly make any offer, payment, or promise to pay; authorize payment; nor offer a gift, promise
to give, or authorize the giving of anything of value for the purpose of influencing any act or
decision of an official of any foreign government or the United States Government (including a
decision not to act) or inducing such a person to use his or her influence to affect any such
governmental act or decision in order to assist LUMINEX in obtaining, retaining or directing any
such business.



     12.8. Export Control. RBM understands and acknowledges that LUMINEX is subject to
regulation by agencies of the United States, including, but not limited to, the U.S. Department of
Commerce, which prohibit export or diversion of certain products and technology to certain
countries. Any and all obligations of LUMINEX to provide the Beads or Luminex 100 System, as well
as any other technical information or assistance shall be subject in all respects to such laws and
regulations as shall from time to time govern the license and delivery of technology and products
abroad by persons subject to the jurisdiction of the United States, including without limitation,
the U.S. Export Administration Act of 1979, as amended, any successor legislation, and the Export
Administration Regulations issued by the U.S. Department of Commerce, Bureau of Export
Administration. RBM agrees to cooperate with LUMINEX, including without limitation, providing
required documentation, in order to obtain export licenses or exemptions therefrom. RBM warrants
that it will comply with the U.S. Export Administration Regulations and other laws and regulations
governing exports in effect from time to time. RBM further agrees not to provide Developed
Products, Beads or Luminex 100 Systems to any organization, public or private, which engages in the
research or production of military devices, armaments, or any instruments of warfare, including
biological, chemical and nuclear warfare.



     12.9. Headings. Headings included herein are for convenience only, do not form a part
of this Agreement and shall not be used in any way to construe or interpret this Agreement.



     12.10. Non-Waiver. Any waiver of the terms and conditions hereof must be explicitly
in writing. The waiver by either of the parties of any breach of any provision hereof by the other
shall not be construed to be a waiver of any succeeding breach of such provision or a waiver of the
provision itself.



     12.11. Severability. Should any section, or portion thereof, of this Agreement be
held invalid by reason of any law, statute or regulation existing now or in the future in any
jurisdiction by any court of competent authority or by a legally enforceable directive of any
governmental body, such section or portion thereof shall be validly reformed so as to reflect the
intent of the parties as nearly as possible and, if unreformable, shall be deemed divisible and
deleted with respect to such jurisdiction, but the Agreement shall not otherwise be affected.
Notwithstanding the foregoing, if Section 5.1 is held invalid by reason of any law, statute or
regulation existing now or in the future in any jurisdiction by any court of competent authority or
by a legally



27









 







enforceable directive of any governmental body, the parties agree to negotiate in good faith
to reach a mutually acceptable substitute provision; provided, however, LUMINEX may terminate this
Agreement by written notice to RBM if the parties are unable to agree upon a mutually acceptable
substitute provision.



     12.12. Advice of Counsel. RBM and LUMINEX have each consulted counsel of their choice
regarding this Agreement, and each acknowledges and agrees that this Agreement shall not be deemed
to have been drafted by one party or another and will be construed accordingly.



     12.13. Compliance with Laws. Each party shall furnish to the other party any
information requested or required by that party during the term of this Agreement or any extensions
hereof to enable that party to comply with the requirements of any U.S. or foreign state and/or
government agency.



     12.14. Further Assurances. At any time or from time to time on and after the date of
this Agreement, RBM shall at the request of LUMINEX (i) deliver to LUMINEX such records, data or
other documents consistent with the provisions of this Agreement, (ii) execute, and deliver or
cause to be delivered, all such consents, documents or further instruments of transfer or license,
and (iii) take or cause to be taken all such actions, as LUMINEX may reasonably deem necessary or
desirable in order for LUMINEX to obtain the full benefits of this Agreement and the transactions
contemplated hereby.



     12.15. Independent Contractors. The relationship of RBM and LUMINEX established by
this Agreement is that of independent contractors. Nothing in this Agreement shall be construed to
create any other relationship between RBM and LUMINEX. Neither party shall have any right, power
or authority to assume, create or incur any expense, liability or obligation, express or implied,
on behalf of the other.



     12.16. Entire Agreement. The terms and provisions contained in the Agreement,
including the Exhibits hereto, constitute the entire agreement between the parties regarding the
subject matter hereof and shall supersede all previous communications, representations, agreements
or understandings, either oral or written, between the parties concerning such subject matter. The
parties agree that the terms and conditions of this Agreement shall prevail, notwithstanding
contrary or additional terms, in any purchase order, sales acknowledgment, confirmation or any
other document issued by either party affecting the sale of Beads or Luminex 100 Systems. No
agreement or understanding varying or extending this Agreement shall be binding upon either party
hereto, unless set forth in a writing which specifically refers to the Agreement signed by duly
authorized officers or representatives of the respective parties, and the provisions hereof not
specifically amended thereby shall remain in full force and effect.



     12.17. Counterparts. This Agreement may be executed in counterparts, each of which
shall be deemed an original, but which together shall constitute one and the same instrument.



(SIGNATURE PAGE AND EXHIBITS FOLLOW)




28









 








     IN WITNESS WHEREOF, the parties hereto have caused their duly authorized representatives to
execute this Agreement.



	 	 	 	 	 	 	 	 	 	 	 
	RBM ACQUISITION, INC.	 	 	 	LUMINEX CORPORATION	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/ Mark Chandler 	 	 	 	By:	 	/s/ Harriss T. Currie 	 	 
	 

	 	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	Name:

	 	Mark Chandler 	 	 	 	Name:	 	Harriss T. Currie 	 	 
	 

	 	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	Title:

	 	CEO 	 	 	 	Title:	 	CFO 	 	 
	 

	 	 
	 	 	 	 	 	 	 	 






29












 





EXHIBIT A




END USER LICENSES




Label/Sticker for Luminex 100 System:




By opening the packaging containing this unit of Luminex 100 instrumentation or using this unit of
Luminex 100 instrumentation in any manner, you are consenting and agreeing to be bound by the
following terms and conditions and the terms and conditions set forth in the End User License
Agreement for the Luminex software included with this unit. You are also agreeing that all such
terms and conditions constitute a legally valid and binding contract that is enforceable against
you. If you do not agree to all of such terms and conditions, you must promptly return this unit
of Luminex 100 instrumentation for a full refund prior to using it in any manner.



No rights or licenses under any of Luminex Corporation’s (“Luminex”) patents are granted by or
shall be implied from the sale of this unit of Luminex 100 instrumentation or license of Luminex
software to you, the purchaser, and you do not receive any right under Luminex’s patent rights by
virtue of your purchase of Luminex 100 instrumentation or license of Luminex software. You agree
that the Luminex 100 instrumentation and Luminex software are sold only for use with fluorescently
labeled microsphere beads authorized by Luminex and you may obtain a royalty-free license under
Luminex’s patents, if any, to use this unit of Luminex 100 instrumentation with fluorescently
labeled microsphere beads authorized by Luminex by purchasing beads authorized by Luminex and
registering this unit of Luminex 100 instrumentation with Luminex in accordance with the
instructions accompanying the Luminex 100 instrumentation.



Label License/Sticker for Developed Products:




By opening the packaging containing this Developed Product (which contains fluorescently labeled
microsphere beads authorized by Luminex Corporation) or using this Developed Product in any manner,
you are consenting and agreeing to be bound by the following terms and conditions. You are also
agreeing that the following terms and conditions constitute a legally valid and binding contract
that is enforceable against you. If you do not agree to all of the terms and conditions set forth
below, you must promptly return this Developed Product for a full refund prior to using it in any
manner.



You, the customer, acquire the right under Luminex Corporation’s patent rights, if any, to use this
Developed Product or any portion of this Developed Product, including without limitation the
microsphere beads contained herein, only with Luminex Corporation’s laser based fluorescent
analytical test instrumentation marketed under the name Luminex 100.



License Agreement for Luminex 100 System Software:




By opening the packaging containing a unit of Luminex 100 instrumentation or using such unit in any
manner, you are consenting and agreeing to be bound by the terms and conditions set forth in the
following End-User License Agreement (EULA). You are also agreeing that the EULA constitutes a
legally valid and binding contract that is enforceable against you. If you do not agree to all of
the terms and conditions in the EULA, you must promptly return the related unit of Luminex 100
instrumentation for a full refund prior to using it in any manner.



End-User License Agreement (EULA) for Luminex 100TM Operating System




This Luminex End-User License Agreement (“EULA”) is a legal agreement between you (either an
individual or a single entity, also referred herein as “you”) the end-user and Luminex Corporation
(“Luminex”) regarding the use of the Luminex software product identified above, which includes
computer software and online or electronic documentation and may include associated media and
printed materials (if any) (“SOFTWARE PRODUCT” or “SOFTWARE”).



A-1









 





The SOFTWARE PRODUCT is protected by copyright laws and international copyright treaties, as well
as other intellectual property laws and treaties. The SOFTWARE PRODUCT is licensed, not sold.




	1.	 	GRANT OF LICENSE. Subject to the terms and conditions of this EULA, Luminex hereby grants to
you a nonexclusive, nontransferable, nonassignable license (without right to sublicense)
under Luminex’s copyrights and trade secrets to use the SOFTWARE PRODUCT on a hardware
platform purchased from Luminex pursuant to Luminex’s terms and conditions of sale. You may
only make one (1) copy of the SOFTWARE PRODUCT for backup or archival purposes only. Although
no rights or licenses under any of Luminex’s patents are granted by or shall be implied from
the license of the SOFTWARE or the sale of Luminex 100 instrumentation to you, you may obtain
a license under Luminex’s patents, if any, to use the Luminex 100 instrumentation with
fluorescently labeled microsphere beads authorized by Luminex by purchasing such beads from
Luminex or an authorized Luminex reseller.
	 
	2.	 	RESTRICTIONS.






	 	•	 	You must maintain all proprietary notices on all copies of the SOFTWARE PRODUCT.
	 
	 	•	 	You may not distribute copies of the SOFTWARE PRODUCT to third parties.
	 
	 	•	 	You may not reverse-engineer, decompile, disassemble, or otherwise attempt to
derive source code from the SOFTWARE PRODUCT.
	 
	 	•	 	You may not copy (other than one backup or archival copy), distribute,
sublicense, rent, lease, transfer or grant any rights in or to all or any portion of
the SOFTWARE PRODUCT.
	 
	 	•	 	You must comply with all applicable laws regarding the use of the SOFTWARE PRODUCT.
	 
	 	•	 	You may not modify or prepare derivative works of the SOFTWARE PRODUCT.
	 
	 	•	 	You may not use the SOFTWARE PRODUCT to process data for third parties or
otherwise in a computer-based service business or publicly display visual output of the
SOFTWARE PRODUCT.
	 
	 	•	 	You may not transmit the SOFTWARE PRODUCT over a network, by telephone, or
electronically by any means.






	3.	 	TERM AND TERMINATION. Your rights under this EULA are effective until termination. You may
terminate this EULA at any time by destroying the SOFTWARE PRODUCT, including all computer
programs and documentation, and erasing any copies residing on your computer equipment. Your
rights under this EULA automatically terminate without further action on the part of Luminex
if you do not comply with any of the terms or conditions of this EULA. Upon any termination
of this EULA, you agree to destroy the SOFTWARE PRODUCT and erase any copies residing on your
computer equipment.
	 
	4.	 	RIGHTS IN SOFTWARE. All rights and title in and to the SOFTWARE PRODUCT and any copies
thereof are owned by Luminex or its suppliers. This EULA is not a sale and does not transfer
to you any title or ownership interest in or to the SOFTWARE or any patent, copyright, trade
secret, trade name, trademark or other intellectual property right therein. You shall not
remove, alter, or obscure any proprietary notices contained on or within the SOFTWARE and
shall reproduce such notices on any back-up copy of the SOFTWARE. All title and intellectual
property rights in and to the content which may be accessed through use of the SOFTWARE
PRODUCT is the property of the respective content owner and may be protected by applicable
copyright or other intellectual property laws and treaties. This EULA grants you no rights to
use such content.
	 
	5.	 	EXPORT RESTRICTIONS. You agree that you will not export or re-export the SOFTWARE PRODUCT to
any country, person, entity, or end-user subject to U.S.A. export restrictions. You hereby
represent and warrant to Luminex that no state or federal agency has suspended, revoked, or
denied your export privileges.
	 
	6.	 	NO WARRANTY. THE SOFTWARE PRODUCT IS LICENSED “AS IS.” ANY USE OF THE SOFTWARE PRODUCT IS
AT YOUR OWN RISK. THE SOFTWARE PRODUCT IS PROVIDED FOR USE ONLY WITH LUMINEX PRODUCTS.
Luminex warrants for a period of ninety (90) days from the date of shipment that, under normal
use, the media on which the SOFTWARE PRODUCT was delivered will be free of defects in material
and workmanship.




A-2









 












	 	 	You bear the entire risk as to damage and the quality and performance of the SOFTWARE
PRODUCT. You assume risk to any hardware, software, data or any other item as a result of
the copying or use of the SOFTWARE PRODUCT, including but not limited to the costs of any
repairs or replacement of any item or any services. You assume responsibility for the
selection of the SOFTWARE PRODUCT to achieve your intended results, and for the
installation, use and results obtained from the SOFTWARE PRODUCT.
	 
	 	 	TO THE FULL EXTENT PERMITTED BY APPLICABLE LAW, LUMINEX MAKES NO OTHER WARRANTIES OF ANY
KIND, AND NO WARRANTY IS GIVEN THAT THE SOFTWARE PRODUCT IS ERROR-FREE OR THAT ITS USE WILL
BE UNINTERRUPTED OR THAT IT WILL WORK IN CONNECTION WITH ANY OTHER SOFTWARE. ALL
WARRANTIES, CONDITIONS, REPRESENTATIONS, INDEMNITIES AND GUARANTEES, WHETHER EXPRESS OR
IMPLIED, ARISING BY LAW, CUSTOM, PRIOR ORAL OR WRITTEN STATEMENTS (INCLUDING, BUT NOT
LIMITED TO, ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR PARTICULAR PURPOSE OR OF
ERROR-FREE AND UNINTERRUPTED USE OR ANY WARRANTY AGAINST INFRINGEMENT) ARE HEREBY
OVERRIDDEN, EXCLUDED AND DISCLAIMED, EXCEPT AS OTHERWISE EXPRESSLY STATED IN THIS EULA.
	 
	 	 	No Luminex distributor, dealer, agent, or employee is authorized to make any modifications,
extensions or additions to these warranty provisions or to this EULA.
	 
	 	 	If Texas law is held not to apply to this EULA for any reason, then in jurisdictions where
warranties, guarantees, representations, and/or conditions of any type may not be
disclaimed, any such warranty, guaranty, representation and/or condition is hereby limited
to the period of either (a) thirty (30) days from the date of shipment or (b) the shortest
period allowed by law in the applicable jurisdiction if a thirty (30) day limitation would
be unenforceable. In addition, all provisions this EULA shall be enforced in part, if only
certain parts of it are enforceable.
	 
	 	 	All warranties are void if a failure of a warranted item results, directly or indirectly,
from an unauthorized modification to a warranted item, an unauthorized attempt to repair a
warranted item, or misuse of a warranted item, including, without limitation, use of a
warranted item under abnormal operating conditions, reverse engineering, or subjecting a
warranted item to unreasonably harsh conditions of any kind.
	 
	 	 	Luminex’s sole liability for any breach of any warranty shall be, in Luminex’s sole
discretion: (i) to replace your defective media or (ii) to refund the license fee that you
paid for the SOFTWARE PRODUCT. To be entitled to this remedy, however, you must provide to
Luminex a copy of this EULA, your proof of purchase, and the defective media.
	 
	7.	 	LIMITATION OF LIABILITY. IN NO EVENT SHALL LUMINEX OR ITS SUPPLIERS BE LIABLE FOR ANY
SPECIAL, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES WHATSOEVER (INCLUDING, WITHOUT
LIMITATION, DAMAGES FOR LOSS OF BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS
INFORMATION, OR ANY OTHER PECUNIARY LOSS) ARISING OUT OF THE USE OF OR INABILITY TO USE THE
SOFTWARE PRODUCT, EVEN IF LUMINEX HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
	 
	8.	 	MISCELLANEOUS. THIS EULA IS GOVERNED BY THE LAWS OF THE STATE OF TEXAS, U.S.A., WITHOUT
REFERENCE TO CONFLICTS OF LAWS PRINCIPLES. You shall not assign or sublicense or otherwise
transfer the rights or license granted hereunder, by agreement or by operation of law, without
the prior written consent of Luminex, and all assignments in violation of this prohibition
shall be null and void. This EULA is the complete and exclusive agreement of Luminex and you
and supersedes all other communications, oral or written, relating to the subject matter
hereof. No change to this EULA shall be valid unless in writing and signed by the party
against whom enforcement is sought. The waiver or failure of Luminex or you to exercise in any
respect any right or rights provided for herein shall not be deemed a waiver of any further
right hereunder. If any provision of this EULA is held unenforceable, the remainder of this
EULA will continue in full force and effect.




A-3









 











Terms and Conditions to be Included for Sale of Beads:




By opening the packaging containing fluorescently labeled microsphere beads authorized by Luminex
Corporation or using such beads in any manner, you are consenting and agreeing to be bound by the
following terms and conditions. You are also agreeing that the following terms and conditions
constitute a legally valid and binding contract that is enforceable against you. If you do not
agree to all of the terms and conditions set forth below, you must promptly return the beads for a
full refund prior to using them in any manner.



1. Acceptance — ALL SALES ARE SUBJECT TO AND EXPRESSLY CONDITIONED UPON THE TERMS AND
CONDITIONS CONTAINED HEREIN, AND UPON BUYER’S ASSENT THERETO. NO VARIATION OF THESE TERMS AND
CONDITIONS SHALL BE BINDING UPON LUMINEX CORPORATION (“LUMINEX”) UNLESS AGREED TO IN WRITING AND
SIGNED BY AN AUTHORIZED REPRESENTATIVE OF LUMINEX. Buyer, by accepting the fluorescently-dyed
microsphere beads (“Beads”) shall be deemed to have assented to the terms and conditions set forth
herein, notwithstanding any terms contained in any prior or later communications from Buyer and
whether or not Seller shall specifically or expressly object to any such terms.



2. Warranties — Seller warrants that the Beads conform in all material respects to the description
of the Beads as provided to Buyer by Seller through Seller’s designated product specifications.
THIS WARRANTY IS EXCLUSIVE AND NEITHER SELLER NOR LUMINEX MAKES ANY OTHER WARRANTY, EXPRESS OR
IMPLIED, INCLUDING ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
Seller’s warranties made in connection with this sale shall not be effective if Seller has
determined, in its sole discretion, that Buyer has misused the Beads in any manner, has failed to
used the Beads in accordance with industry standards or practices or has failed to use the Beads in
accordance with instructions, if any, furnished by Seller.



     BUYER’S EXCLUSIVE REMEDY WITH RESPECT TO BEADS PROVED TO SELLER’S SATISFACTION TO BE
DEFECTIVE OR NONCONFORMING SHALL BE REPLACEMENT OF SUCH PRODUCTS WITHOUT CHARGE OR REFUND OF THE
PURCHASE PRICE, IN SELLER’S SOLE DISCRETION, UPON THE RETURN OF SUCH PRODUCTS IN ACCORDANCE WITH
SELLER’S INSTRUCTIONS. NEITHER SELLER NOR LUMINEX SHALL IN ANY EVENT BE LIABLE FOR INCIDENTAL,
CONSEQUENTIAL OR SPECIAL DAMAGES OF ANY KIND RESULTING FROM ANY USE OR FAILURE OF THE BEADS, EVEN
IF SELLER OR LUMINEX HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE INCLUDING, WITHOUT
LIMITATION, LIABILITY FOR LOSS OF WORK IN PROGRESS, DOWN TIME, LOSS OF REVENUE OR PROFITS, FAILURE
TO REALIZE SAVINGS, LOSS OF PRODUCTS OF BUYER OR OTHER USE OR ANY LIABILITY OF BUYER TO A THIRD
PARTY ON ACCOUNT OF SUCH LOSS, OR FOR ANY LABOR OR ANY OTHER EXPENSE, DAMAGE OR LOSS OCCASIONED BY
SUCH PRODUCT INCLUDING PERSONAL INJURY OR PROPERTY DAMAGE UNLESS SUCH PERSONAL INJURY OR PROPERTY
DAMAGE IS CAUSED BY SELLER’S GROSS NEGLIGENCE.



3. Buyer’s Use of Beads — The Beads are solely intended for laboratory research and evaluation
purposes only and are not to be used for any commercial applications or purposes. Buyer agrees
that no rights or licenses under Luminex’s patents shall be implied from the sale of the Beads,
except as expressly provided herein, and Buyer does not receive any right under Luminex’s patent
rights hereunder. Buyer acknowledges and agrees that the Beads are sold and licensed only for use
with Luminex’s laser based fluorescent analytical test instrumentation. Buyer further acknowledges
that the Beads have not received approval from the United States Food and Drug Administration or
other federal, state or local regulatory agencies and have not been tested by Seller or Luminex for
safety or efficacy in food, drug, medical device, cosmetic, commercial or any other use, unless
otherwise stated in Seller’s technical specifications or material data sheets furnished to Buyer.
Buyer expressly represents and warrants to Seller that Buyer will properly test and use any Beads
in accordance with the practices of a reasonable person who is an expert in the field and in strict
compliance with all applicable laws and regulations, now and hereinafter enacted.



A-4









 





     BUYER HEREBY GRANTS TO LUMINEX A NONEXCLUSIVE, WORLDWIDE, UNRESTRICTED, ROYALTY-FREE,
FULLY PAID-UP LICENSE, WITH THE RIGHT TO GRANT AND AUTHORIZE SUBLICENSES, UNDER ANY AND ALL PATENT
RIGHTS IN INVENTIONS COMPRISING MODIFICATIONS, EXTENSIONS, OR ENHANCEMENTS MADE BY BUYER TO THE
BEADS OR TO THE MANUFACTURE OR USE OF THE BEADS (“IMPROVEMENT PATENTS”), TO MAKE, HAVE MADE, USE,
IMPORT, OFFER FOR SALE OR SELL ANY AND ALL BEADS; EXPLOIT ANY AND ALL METHODS OR PROCESSES; AND
OTHERWISE EXPLOIT IMPROVEMENT PATENTS FOR ALL PURPOSES. NOTWITHSTANDING THE FOREGOING, “IMPROVEMENT
PATENTS” SPECIFICALLY EXCLUDES PATENT CLAIMS CONCEIVED AND REDUCED TO PRACTICE BY BUYER CONSISTING
OF METHODS OF SAMPLE PREPARATION, METHODS OF CONJUGATING BEADS TO ANALYTES, THE COMPOSITION OF
MATTER OF THE SPECIFIC CHEMISTRIES OF THE ASSAYS DEVELOPED BY BUYER AND METHODS OF PERFORMING THE
ASSAYS (I.E., THE PROTOCOL FOR THE ASSAY).



     Buyer has the responsibility and hereby expressly assumes the risk to verify the hazards and
to conduct any further research necessary to learn the hazards involved in using the Beads. Buyer
also has the duty to warn Buyer’s customers, employees, agents, assigns, officers, successors and
any auxiliary or third party personnel (such as freight handlers, etc.) of any and all risks
involved in using or handling the Beads. Buyer agrees to comply with instructions, if any,
furnished by Seller or Luminex relating to the use of the Beads and not misuse the Beads in any
manner. Buyer shall not reverse engineer, decompile, disassemble or modify the Beads. Buyer
acknowledges that Luminex retains ownership of all patents, trademarks, trade secrets and other
proprietary rights relating to or residing in the Beads.



4. Buyer’s Representations, Release and Indemnity - Buyer represents and warrants that it shall use
the Beads in accordance with Paragraph 2, “Buyer’s Use of Beads,” and that any such use of Beads
will not violate any law, regulation, judicial order or injunction. Buyer agrees to release,
discharge, disclaim and renounce any and all claims, demands, actions, causes of action and/or
suits in law or equity, now existing or hereafter arising, whether known or unknown, against Seller
and Luminex, and their respective officers, directors, employees, agents, successors and assigns
(collectively the “Released Parties”), with respect to the use of the Beads. Buyer agrees to
indemnify and hold harmless the Released Parties from and against any suits, losses, claims,
demands, liabilities, costs and expenses (including attorney, accounting, expert witness, and
consulting fees) that any of the Released Parties may sustain or incur as a result of any claim
against such Released Party based upon negligence, breach of warranty, strict liability in tort,
contract or any other theory of law or equity arising out of, directly or indirectly, the use of
the Beads or by reason of Buyer’s failure to perform its obligations contained herein. Buyer shall
fully cooperate with the Released Parties in the investigation and determination of the cause of
any accident involving the Beads which results in personal injury or property damage and shall make
available to the Released Parties all statements, reports, recordings and tests made by Buyer or
made available to Buyer by others.



5. Patent Disclaimer — Neither Seller nor Luminex warrants that the use or sale of the Bead will
not infringe the claims of any United States or other patents covering the product itself or the
use thereof in combination with other products or in the operation of any process.



A-5









 





EXHIBIT G




AVAILABLE FIELDS




DIAGNOSTIC FIELDS*




The Field of Allergy Testing



The Field of Allergy Testing means the detection of allergens (known substances which cause
allergic reactions), antibodies thereto (all classes) and markers associated with the allergic
process.



Examples of analytes in this Field are: total and allergen specific immunoglobulin (IgE) and other
immunoglobulin (IgG, IgA) mites, foods, ragweed, pollen and other substances, e.g., histamine,
directly related to the allergic response.




The Field of Autoimmune Disease Testing



The Field of Autoimmune Disease Testing means the detection and measurement of antigens (soluble or
cellular) and serum antibodies thereto which are related to auto immune diseases such as lupus
erythematosus, rheumatoid arthritis, Sjogrens disease. Scleroderma, Diabetes, and various
neurological disorders, etc.



Examples
of analytes in this Field are: anti-nuclear antibodies, anti-DNA antibodies, smooth
muscle antibody, anti-cardiolipin antibodies, anti-mitochondrial antibodies, anti-neutrophil
Cytoplasmic Antibodies (ANCA), rheumatoid factor, anti-myelin




The Field of Bacteriological Immunoassays



The Field of Bacteriological Immunoassays means the detection of bacteria, toxins related thereto
and antibodies thereof.



Examples
of analytes in this Field are: salmonella, campylobacter, H. Pylori, staphylococcus,
streptococcus, tuberculosis, E. coli and related toxins, syphilis, gonorrhea




The Field of Bacteriological Nucleic Acid Assays



The Field of Bacteriological Nucleic Acid Assays means the detection of bacteria by measurement
of specific nucleic acids.



Examples
of analytes in this Field are: salmonella, campylobacter, H. Pylori, staphylococcus,
streptococcus, tuberculosis, E. coli and related toxins, syphilis, gonorrhea






 




			
	*	 	The Diagnostic Fields specifically exclude (i) applications for use on or with point of care
devices using LUMINEX technologies, (ii) applications for
neo-natal screening, (iii) applications for Alzheimer’s and Alzheimer’s related disease, and (iv) applications for blood banking and
transfusion medicine





G-1 









 






The Field of Cancer Marker Immunoassay Testing



The Field of Cancer Marker Immunoassay Testing means those markers, antibodies thereto which are
diagnostic for and/or used to detect and monitor cancers of all types, solid and lymphatic



Examples
of analytes in this Field are: PSA, CEA, PAP, AFP, CA 19-9, CA 15-3, CA 125, calcitonin




The Field of Cancer Marker Nucleic Acid Testing



The Field of Cancer Marker Nucleic Acid Testing means those markers, antibodies thereto which are
diagnostic for and/or used to detect and monitor cancers of all types, solid and lymphatic



Examples
of analytes in this Field are: BRAC1, BRAC2, P53, K-RAS




The Field of Cardiac Event Marker Testing



The Field of Cardiac Event Marker Testing means the detection of markers associated with a heart
attack, stable and unstable angina, congestive heart disease, ventricular dysfunction and related
cardiac conditions



Examples
of analytes in this Field are: CKMB, Troponin I, Troponin T, myoglobin




The Field of Coronary Artery Disease Marker Testing



The Field of Coronary Artery Disease Marker Testing means the detection of markers which are
indications of coronary artery disease including hypertension and risk of cardiac events




Examples of analytes in this Field are: fibrinogen, homocystine,
apolipoproteins, lipoproteins
including genetic markers of the diseases, aldosterone, renin,
catecholamine, ferrtin, B12/Folate




The Field of Cytokine/Chemokine Immunoassay Testing




The Field of Cytokine/Chemokine Immunoassay Testing means the detection of intercellular messengers,
their receptors and antibodies thereto, specifically excluding endocrine hormones



Examples
of analytes in this Field are: interleukins, growth factors, apoptotic and signal
transduction markers




The Field of Cytokine/Chemokine Nucleic Acid Testing



The Field of Cytokine/Chemokine Nucleic Acid Testing means the detection of nucleic acids of
intercellular messengers and their receptors



Examples
of analytes in this Field are: interleukins, growth factors, apoptotic and signal
transduction markers




The Field of Drugs of Abuse



The Field of Drugs of Abuse means the detection or recreational, elicit and other drugs which are
abusive by nature or abusive in overdoses




G-2 









 








Examples
of analytes in this Field are: cocaine, canabinoids, barbiturates, amphetamines and
metabolites




The Field of Endocrinology Testing



The Field of Endocrinology Testing means the measurements of hormones secreted by the endocrine
system



Examples
of analytes in this Field are: T4 (triiodothyronine), T3 uptake, free T4, TSH (thyroid
stimulating hormone), HGH (human growth hormone), somatostatin,
cortisol, insulin antibody, thyroglobulin, HCG, Estrogen, Estriol,
Estradiol, FSH (follicle stimulating hormone), LH (leutinizing
hormone), Prolactin, HPL (human placental lactogen), Testosterone, Progesterone




The Field of Hemostasis



The Field of Hemostasis means the measurement of clotting factors, antigens and antibodies related
to clot formation, antigens and antibodies related to thrombolysis and other markers directly
involved in measuring status of hemostasis



Examples
of analytes in this Field are: soluble fibrins, D-dimer, fibrin degradation products,
beta-thromboglobulin, factor IIA, factor XIIA, other coagulation factors, protein C




The Field of Hereditary Disease Testing



The Field of hereditary Disease Testing means the detection of nucleic acids and other markers
associated with specific hereditary diseases



Examples
of analytes in this Field are: Cystic Fibrosis, Tay Sachs




The Field of HLA Testing



The Field of HLA Testing means the detection of HLA (human leucocyte antigen) cellular antigens,
serum based antibodies to HLA antigens, soluble HLA antigens, nucleic acids related to such
antigens




The Field of Identity Testing



The Field of Identity Testing means the detection of nucleic acid sequences (EXCLUDING HLA) for
identity/paternity testing




The Field of Immunoglobulin and Serum Protein Testing



The Field of Immunoglobulin and Serum Protein Testing means the detection and measurement of
various immunoglobulin, their classes and sub-classes and serum proteins, excluding proteins
associated with other Fields as defined herein



Examples
of analytes in this Field are: IgG, IgM, IgA and their sub-classes, complement, alpha 1
antitrypsin, C-Reactive protein, ceruloplasmin, haptoglobin, transferrin





G-3 












 





The Field of Mycology/Parasitology Immunoassays



The Field of Mycology/Parasitology Immunoassays means the detection of fungi and parasites, toxins
related thereto and antibodies thereof



Examples
of analytes in this Field are: aspergillus, candida, markers or antibodies associated with
schistosomiasis, giardia lamblia, leishmaniasis. Lyme Disease, Chagas, toxoplasmosis.




The Field of Mycology/Parasitology Nucleic Acid Assays



The Field of Mycology/Parasitology Nucleic Acid Assays means the detection of fungi and parasites
by measurement of specific nucleic acids



Examples
of analytes in this Field are: aspergillus, candida, nucleic acids associated with
schistosomiasis, giardia lamblia, leishmaniasis, Lyme Disease, Chagas, toxoplasmosis




The Field of Nutritional Status Testing



The Field of Nutritional Status Testing means the measurement of analytes associated with and
indicative of an individual’s nutritional status



Examples
of analytes in this Field are: Vitamin, trace metals, coenzymes.




The Field of Osteoporosis Testing



The Field of Osteoporosis Testing means the detection of markers which solely or partially help
determine the existence of an osteoporotic condition and/or stage of the disease including the
specific treatment thereof



Examples
of analytes in this Field are: osteocalcin, C-telopeptide, N-telopeptide,
alkaline phosphatase, acid phosphatase




The Field of Therapeutic Drug Monitoring



The Field of Therapeutic Drug Monitoring means the measurement of drug levels in patients in order
to monitor their levels to achieve optimal therapy



Examples
of analytes in this Field are: antibiotic aminoglycosides such as
amikacin and, vancomycin,
drugs to treat respiratory diseases such as, drugs to treat neurological diseases such as Dilantin
and Phenobarbital for epilepsy, cyclosporin, drugs to treat cancer such as methotrexate, Taxol,
cardiac drugs such as Digoxin, etc




The Field of Virology Immunoassays



The Field of Virology Immunoassays means the detection of viruses, toxins related thereto and
antibodies thereof



Examples
of analytes in this Field are: HbsAg, Hepatitis C, HIV, rotavirus, respiratory syncytial
virus, influenza, herpes, chlamydia, HIV, Herpes, chlamydia, HIV,









G-4









 








The Field of Virology Nucleic Acid Assays



The Field of Virology Nucleic Acid Assays means the detection of viruses by measurement of
specific nucleic acids



Examples
of analytes in this Field are: HbsAg, Hepatitis C, HIV, rotavirus, respiratory syncytial
virus, influenza, herpes, chlamydia, HIV, herpes, chlamydia, HIV,




RESEARCH PRODUCTS FIELD




The Field of Research Nucleic Acid



Nucleic Acid Testing means the detection and/or quantitation of a nucleic acid using a probe or
gene sequence whether for detection of mRNA expression, gene sequencing, gene synthesis, display
(differential or not) or other purpose solely for Research Use







G-5









 








EXHIBIT H




ELECTED FIELDS




The Field of Research Immunoassays and Assays of Enzymes



Research Immunoassays means the detection and/or quantitation of a substance and or organism/toxin
using an antibody whether in a direct or competitive assay or an antigen to detect an antibody
solely for Research Use. Assays of Enzymes means the detection of enzymes as opposed to the use of
enzymes as part of another analytical method, e.g., ELISA solely for Research Use. For avoidance of
doubt, this field shall encompass the entire Research Products Field other than Research Nucleic
Acids









H-1









 








EXHIBIT H




ELECTED FIELDS




The Field of Research Immunoassays and Assays of Enzymes



Research Immunoassays means the detection and/or quantitation of a substance and or organism/toxin
using an antibody whether in a direct or competitive assay or an antigen to detect an antibody
solely for Research Use. Assays of Enzymes means the detection of enzymes as opposed to the use of
enzymes as part of another analytical method, e.g., ELISA solely for Research Use. For avoidance of
doubt, this field shall encompass the entire Research Products Field other than Research Nucleic
Acids.





H-1